The Complainant is Deloitte Touche Tohmatsu, of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, of United States of America.
The Respondent is Pluto Domain Services Private Limited., of Mumbai, Maharashtra, India; Private Whois For dpelprip 1703, of Mumbai, Maharashtra, India.
The disputed domain name <delolitte.com> is registered with Lead Networks Domains vt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2008. On October 24, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On November 3, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on December 9, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Swiss Verein which has no precise legal equivalent in many other countries including the United States of America (“U.S.”). The German word “Verein” may be translated loosely as “unincorporated association” in this context. It exists to provide services to its member firms. One of the Verein's functions is ownership of the DELOITTE trademarks (“the Marks”) which have been in use by its members since 1989. All use of the Marks is regulated by agreements in place between the Complainant and the member firms. Under those agreements, all rights and goodwill in the Marks enures to the benefit of the Complainant.
The Complainant and its member firms employ over 150,000 personnel in over 140 countries. The member firms all use the Marks. In the fiscal year 2007, the Complainant's member firms achieved a year record growth with aggregate revenues of 23.1 billionUSD. It is anticipated that these figures will be substantially higher in 2008. It would be fair to say the Marks qualify as well-known in the international financial services industry. This reputation is enhanced by the articles and promotional material appearing in the financial press around the world. This material is provided both by the Complainant and its member firms and by others in the financial industry who write about them.
One example of its fame is that the U.S. member firms of the Complainant were ranked the first on the top 100 Tax and Accounting firms in an annual survey of accounting professors. The Complainant also owns a large number of trademark registrations around the world which either comprise DELOITTE or contain DELOITTE with other elements.
The Complainant owns and maintains a website at “www.deloitte.com” which assists users to inform themselves of the organization's activities around the world. The Respondent's website at “www.delolitte.com” contains sponsored links to websites of the Complainant's competitors offering similar services. At first sight it is a website which ordinary members of the public may believe is offered by the Complainant for people requiring a range of financial services. Its effect therefore, the Complainant contends, is to take potential business from the Complainant and direct it to its competitors with financial gain to the Respondent.
Further, the Respondent initially registered the disputed domain name through a privacy service in an attempt to screen its identity. It was only after the Complainant filed its Complaint that the Registrar identified the Respondent.
The Respondent did not reply to the Complainant's contentions.
In order to determine whether the Complainant's contentions are justified, it is necessary to apply the criteria set out by the Policy. These are set out under the three headings below.
The Panel finds that the Respondent's domain name <delolitte.com> is confusingly similar to the Complainant's Marks and domain name <deloitte.com>. There is only one letter's difference between the two names. The Complainant's trademark DELOITTE is in itself an uncommon name in English and for that reason, it is very easy to see that an Internet user would make a typographical error in entering it into a browser and therefore find himself or herself at the Respondent's website rather than at the Complainant's site where he or she most likely wanted to be as it is unlikely that the person would be familiar with the Respondent or its website.
This is a very blatant use of typosquatting and particularly effective in light of spelling of “Deloitte”. This situation is analogous to that in the case of Gaetano, Inc. d/b/a Lisa Curran Swim v. Texas International Property Association, WIPO Case No. D2007-1428, in which inter alia, the substitution of an “e” in the domain name <lisacurren.com> for an “a” in the Complainant's name was not sufficient to born a finding of confusing similarity. In that case the Complainant did not even have a trademark registration at the time of the complaint but the found for the Complainant on the basis that the Complainant acting on behalf of the famous swimmer had a sufficient reputation to justify its claim to ownership of the domain name <lisacurran.com> and to defend it from the Respondent's <lisacurren.com> domain name.
What that case has in common with the present case is that the typographical errors in each case are ones that could easily be made and not recognized as mistakes by the Internet user.
For the above reasons, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to its Marks.
What rights does the Respondent have in the present case? Nothing in the Respondent's name indicates that it has any right to use the domain name <delolitte.com>. There is nothing to indicate that it trades under that name. Indeed, the website which is linked to the disputed domain name <delolitte.com> does not provide any information about the Respondent but is merely providing sponsored links to other's websites offering services similar to those offered by the Complainant.
The Complainant has not licensed the Respondent to use the name DELOITTE. Had it done so, it presumably would have insisted on the correct spelling being used.
In the present case the Respondent has not lodged a Response. That in itself is not sufficient to remove the burden of proof from the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. However, in a case where the complainant has satisfied its burden, the burden of proof shifts to the respondent to prove it has rights or legitimate interests in the disputed domain name. Here the Respondent has not submitted any such arguments or indeed any Response. That this inference can be drawn in such circumstances has been established in many UDRP decisions including Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA, WIPO Case No. D2000-1376.
Under these circumstances the Panel finds that the Respondent has no rights or legitimate rights in the disputed domain name.
Having considered the evidence lodged by the Complainant and having viewed the Respondent's website, the Panel finds that the Respondent's conduct has been an exploitation of a well-known trademark for its own profit. Many members of the public would not be aware that the Complainant is not sponsoring or otherwise affiliated with the disputed domain name and are attracted to the disputed domain name. The Respondent is likely making profit from these visits to sponsored links on the disputed domain name which occur only because the disputed domain name is using the Complainant's trusted trademark.
Therefore, the Respondent is encouraging members of the public to enter into commerce with organizations unconnected with the Complainant. Those members of the public are being encouraged to believe that the services being offered are in some way endorsed by the Complainant. This is particularly the case where the misspelling of the Complainant's trademark DELOITTE is likely to be missed by customers when typing the disputed domain name.
In L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, the panel discussed the use of well-known trademarks to entice consumers to an unrelated website and said, “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”.
Furthermore, the Panel finds it unlikely that the Respondent registered the disputed domain name without the Complainant's Marks in mind, as evidenced by the aforementioned circumstances.
Under these circumstances the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <delolitte.com> be transferred to the Complainant.
Dated: December 28, 2008