World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. Carl Nguyen, KPMG

Case No. D2010-2169

1. The Parties

The Complainant is KPMG International Cooperative, Amstelveen, the Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Carl Nguyen, KPMG, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <kpmg-intl.com> (“Disputed Domain Name”) is registered with NameSecure L.L.C.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 14, 2010, the Center transmitted by email to NameSecure L.L.C. a request for registrar verification in connection with the Disputed Domain Name. On December 14, 2010, NameSecure L.L.C. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2011.

The Center appointed Andrew J. Park as the sole panelist in this matter on January 20, 2011. 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.

4. Factual Background

The Complainant is a Swiss cooperative that serves as a coordinating entity for the KPMG network of independent member firms. The KPMG network is one of the world’s leading providers of audit, tax and advisory services which are provided by the KPMG member firms. The Complainant currently operates in 146 countries and has 140,000 people in all member firms worldwide. It owns at least 800 trademark registrations worldwide contaning the name KPMG, including six United Kingdom registrations and seven European Community registrations. It also owns at least 800 domain names containing the word KPMG, including “www.kpmg.com” and “www.kpmg.co.uk”.

5. Parties’ Contentions

A. Complainant

The Complainant argues that: (i) the Disputed Domain Name is nearly identical to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, the Complainant contends that the Disputed Domain Name is nearly identical to the Complainant’s KPMG trademark, and thus, the Disputed Domain Name is confusingly similar to its trademark. The Complainant also contends that its use and registration of the KPMG mark predates the Respondent’s registration of the Disputed Domain Name.

Regarding the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, the Complainant contends that it has exclusive rights for the KPMG mark and that the Respondent is not connected to it in any way. The Complainant also contends that the Respondent is using the Disputed Domain Name for the purpose of capitalizing on the fame of the Complainant’s mark.

Regarding the third element, the Complainant argues that the Respondent registered the Disputed Domain Name in bad faith because the Respondent knowingly used the Disputed Domain Name to commit fraudulent and criminal activities. Further, the Complainant argues that the Disputed Domain Name automatically redirects users to one of the Complainant’s websites, and that the Respondent provided false contact details in breach of its registration agreement, all of which demonstrate the Respondent’s bad faith registration and use of the Disputed Domain Name. Finally, the Complainant argues that the Respondent’s passive holding of the Disputed Domain Name is additional evidence that the Respondent registered the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Analysis of the Complaint

Under the Policy, in order to prevail, the Complainant must prove the following three elements of a claim for transfer or cancellation of the Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

The case record contains ample evidence to demonstrate the Complainant’s rights in the registered KPMG trademark. The Panel also determines that the Disputed Domain Name is confusingly similar to the Complainant’s KPMG mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, it is clear that the Disputed Domain Name is composed - in whole - of the Complainant’s KPMG mark. The addition of the “-intl” element is a widely recognized abbreviation for the common, generic word “international” and is therefore considered a non-distinctive and descriptive element of the Disputed Domain Name, when viewed as a whole. Similarly, it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.

The Complainant has not authorized the Respondent to use its KPMG trademark in any respect. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name. Further, the Respondent’s use of the Disputed Domain Name to resolve to one of the Complaint’s websites is, as a practical matter, to sponsor links, and such activity does not constitute use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by the Complainant, the Panel finds that the Respondent is not making fair use of the Complainant’s trademark.

This combination of circumstances sufficiently establishes a prima facie case so that the burden of proof shifts to the Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not filed a Response and has therefore failed to satisfy its burden. Further, having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. The Complainant has therefore prevailed on this part of its Complaint.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

In support of its claim that the Respondent registered and used the Disputed Domain Name in bad faith, the Complainant argued that the Respondent registered the Disputed Domain Name to engage in fraudulent and criminal activities. Specifically, the Complainant submits that the Respondent has some complicity in cases where a third party was involved in disseminating emails using the Disputed Domain Name so as to give the impression that the emails originated from the Complainant or from an entity affiliated with the Complainant, the conduct of which is considered fraudulent and criminal under the laws of the United Kingdom.

While the Panel finds that the argument concerning fraud and criminal conduct is noteworthy, it is, by itself, inadequate to establish the bad faith registration and use of the Disputed Domain Name primarily because there was no clear evidence that linked the Respondent to the fraudulent and allegedly criminal conduct of the third party sender of emails.

The Complainant also argues that (i) the Disputed Domain Name automatically redirects Internet users to one of the Complainant’s websites; (ii) the Respondent breached its domain name registration agreement by providing false contact details; and (iii) the Respondent passively held the Disputed Domain Name. When these additional arguments are considered in light of the present record mentioned above, the Panel finds that the Complainant has establish that the Respondent registered and used the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.

7. Decision

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 <kpmg-intl.com> be transferred from Respondent to Complainant.

Andrew J. Park
Sole Panelist
Dated: February 3, 2011

 

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