WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. H3B
Case No. D2011-0181
1. The Parties
The Complainant is Deloitte Touche Tohmatsu of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is H3B of Croix Cedex, France, self-represented.
2. The Domain Name and Registrar
The disputed domain name <deloittefoundation.com> is registered with OVH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1, 2011, the Center transmitted by email to OVH a request for registrar verification in connection with the disputed domain name. On February 8, 2011, OVH 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”).
On February 9, 2011, the Center sent an email communication in both English and French regarding the language of the proceedings. On February 9, 2011, the Complainant requested that English be the language of the proceedings and on February 10, 2011, the Respondent sent an email communication to the Center where he indicated, inter alia, “[i]t would be easier for me to defend myself in French my native language so I gonna do it in French and I will try to make a short translation in English”.
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 February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. The Respondent sent an email communication to the Center on March 10, 2011 in relation to this matter where he referred to his email communication of February 10, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on March 22, 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 firm of accountants which has been operating under the trademark DELOITTE TOUCHE since at least 1989. It has registered several trademarks consisting of the term DELOITTE used in association with goods and services within international classes generally involving tax and accounting activities namely 009, business administration, bookkeeping, auditing etc.; 035, business management, accounting services, tax preparation, etc.; 036, financial planning, actuarial services, etc.; 042, development of computer hardware, consulting services in various fields including computer based information systems, in association with which it has used the trademark DELOITTE at least since 2004 and DELOITTE and TOUCHE for similar services since 1989 (the “Trademarks” or the “DELOITTE Trademarks” or particularly the “DELOITTE Trademark”).
The firm currently employs more than 170 000 persons in over 140 countries, including France and the Complainant and the member firms associated therewith by license agreement have, in 2010, generated revenues in excess of USD 26 billions.
The Complainant and its member firms currently spend tens of million of dollars each year in advertisement and promotion of the services they render under the DELOITTE Trademarks.
As a consequence of this extensive business in so many countries and its financial situation, the Complainant and its member firms received unsolicited press acknowledgement throughout the world in such publications as Fortune, Business Week, Financial Times, The Wall Street Journal, Bloomberg TV, Forbes.com and Chicago Business. They also received every year dozen of awards and accolades and in particular in each of the past seven years, the Complainant’s United States member firm rank first on the top 100 Tax and Accounting Firms.
The Complainant has appeared as a complainant in at least three occasions before UDRP panels where its DELOITTE Trademark was acknowledged. See Deloitte Touche Tohmatsue v. Open Water Enterprises Limited, Louise S., WIPO Case No. D2008-1632; Deloitte Touche Tohmatsue v. Pluto Domain Services Private Limited/Private Whois For dpelprip 1703, WIPO Case No. D2008-1617 and Deloitte Touche Tohmatsue v. Henry Chan, WIPO Case No. D2003-0584.
The Complainant maintains an Internet website at the domain name <deloitte.com> where visitors may consult and use a technology platform for country specific websites around the world, including the site of its French member firm, and said <deloitte.com> domain name has been in use since 1995.
The disputed domain name <deloittefoundation.com> was registered on May 21, 2008.
On June 25, 2009, the Complainant sent a letter to the Respondent in the English language in which it was explaining its Trademarks rights, objected to the alleged infringing activities of the Respondent by the use of the disputed domain name and requested from the Respondent the transfer of the disputed domain name.
On June 26, 2009, the Respondent answered, in the English language, and simply offered to sell the disputed name to the Complainant and requested an offer from the latter. This request of an offer to sell was rejected by the Complainant by email on June 26, 2009.
5. Parties’ Contentions
The Complainant submits that by reason of its extensive international use and promotion of the DELOITTE Trademarks by itself and its licensed member firms, the Trademarks now benefit of substantial goodwill associated therewith and have become famous throughout the world.
It further represents that while the firm was also known as Deloitte Touche Tohmatsu and Deloitte & Touche, these names were frequently shortened to Deloitte as acknowledged by panels in two earlier UDRP decisions; see Deloitte Touche Tohmatsue v. Henry Chan, supra and Deloitte Touche Tohmatsue v. Moniker Privacy Services/Dan Booker Total Net Solution, WIPO Case No. D2008-1489.
The Complainant further submits that the disputed domain name is confusingly similar with its DELOITTE Trademark and that the addition of the term “foundation” does not in any way diminish the overall and significant presence of the DELOITTE Trademark.
The Complainant claims that the mere addition of the generic term “foundation” to its DELOITTE Trademark does not distinguish the disputed domain name from the DELOITTE Trademark. See AT & T Corp. v. Gormally, WIPO Case No. D2005-0758 and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-1253.
Finally, in referring to the earlier decision Foundation Le Corbusier v. Mercadeo M., WIPO Case No. D2004-0723, the Complainant represents that the use of the generic top level domain “.com” should not be taken into consideration in respect of judging confusing similarity.
The Complainant contends that by reason of the Respondent’s record as a serial cyber squatter which has registered several domain names using multiple addresses, including many names such as <boeingfoundation.com> and <toyotafoundation.com>, upon verification none of these other foundation domains is associated with an active website or legitimate use of the relevant trademarks, this indicates a lack of rights and legitimate interests by the Respondent.
The Complainant further represents that the Respondent is not commonly known by the disputed domain name. Relying on the fame of its DELOITTE Trademarks, the Complainant alleges that the Respondent has no rights in said Trademarks and that the Respondent registered and used the domain name with knowledge of the DELOITTE Trademark and wanted to trade on the Complainant’s renown to lure consumers to its website or confuse recipients of emails from its affiliated emails servers.
According to the Complainant, there is no relationship between the Respondent and the Complainant or any of its member firms, licensees agents or companies which may be understood as confirming the presence of a license, permission or authorization from the Complainant to the Respondent in respect of the ownership or use of the disputed domain name.
The Complainant relying on the fame and widespread recognition of its DELOITTE Trademark and the close connection of the disputed domain name with its Trademarks, further claims that the Respondent’s bad faith may be presumed at the time of the registration. See Deloitte Touche Tohmatsu v. Open Water Enterprises Limited, Louise S., WIPO Case No. D2008-1632; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Pharmacia & Upjohn v. Moreonline, WIPO Case No. D2000-0134.
The Complainant further contends that while the Respondent is not using the disputed domain name, he is engaged in passive holding of said domain name which is still considered to be use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615. According to the Complainant, notwithstanding the fact that upon receiving the letters from the Complainant, the Respondent had an opportunity to explain its bases for use of the DELOITTE Trademark in the disputed domain name, the latter did not provide any explanation for its registration or his current activity with the disputed domain name and despite this opportunity did not establish any legitimate right or interests in the disputed domain name as there was no such evidence possible.
According to the Complainant, the failure of the Respondent to answer its previous communications is further evidence of bad faith. See RRI Financial, Inc. v. Chen, WIPO Case No. D2001-1242.
The Respondent did not present any formal response. However, on February 10, 2011, he indicated by email, inter alia:
“J'ai acheté le nom de domaine deloittefoundation.com sur un marché libre. Je n'ai jamais eu l'intention de porter préjudice à l'entreprise Deloitte Touch ni même d'utiliser ce nom de domaine pour des activités similaires ou concurrentes de Deloitte Touch. Je pense que c'est mon droit le plus absolu que d'acquérir un nom ou une marque à condition que cette marque ne soit pas déposée dans le même secteur d'activité. Je n'ai aucunement l'intention d'utiliser ce nom en profitant de la notoriété de Deloitte Touch ou pour des activités similaires.
I bought that domain name on an open market I have no intention to use that domain in the same activities as Deloitte. It's my right to own that domain and to use it in a different sector. There is no damage for you Deloitte Touch because I am not a competitor of this company and I don't use the notoriety of this company for my own business”..
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Language of the proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is French.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of DELOITTE and English word “foundation”, rather than a French word;
b) The disputed domain name <deloittefoundation.com> resolves to a website at “www.imp.ovh.net” wherein there are six different webmail platforms, five of which have an English presentation, such as “Roundcube”, “free webmail for the masses”, “Iloha mail”, “@mail”, “messaging platform”, and “SquirrelMail, webmail for nuts and Hastymail”;
c) The Respondent did not specifically object to the Complainant’s request that English be the language of the proceeding;
d) All case-related communications sent by the Center were in both French and English;
e) The Respondent appears to have sufficient knowledge of the English language.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding.
B. Identical or Confusingly Similar
The evidence provided by the Complainant in respect of the registration in the United States of several DELOITTE Trademarks, their extensive use by the Complainant and its member firms for more than 20 years in more than 140 countries along with their extensive expenditure of time, money and efforts by its 170 000 employees amply establish that the Complainant has rights in the DELOITTE Trademarks with substantial goodwill and fame associated therewith throughout the world.
The disputed domain name incorporates the whole of the DELOITTE Trademark and the addition of the generic term “foundation” to the DELOITTE Trademark does not distinguish the disputed domain name from the DELOITTE Trademark particularly in the present case in view of the goodwill and fame associated therewith. The Panel has considered and adopts the views of the panels expressed in two other UDRP decisions cited by the Complainant in this respect.
As it was held in Foundation Le Corbusier v. Mercadeo M., supra, also cited by the Complainant, the addition of the generic top level domain indicator “.com” is not taken into consideration when this Panel is appreciating confusing similarity.
The Panel finds that the Complainant has rights in the DELOITTE Trademark and that the disputed domain name is confusingly similar thereto.
The first criterion has been met.
C. Rights or Legitimate Interests
The Panel may accept all reasonable inferences and allegations included in the Complaint and not contested by the Respondent as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and that he is not making a legitimate noncommercial or fair use of the domain name in dispute.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks.
The Complainant has established on a prima facie basis that the Respondent has no legitimate interests or rights in the disputed domain name in stating that there is no relationship between it or any of its member firms, licensees, agents or affiliated companies and the Respondent. In the Panel’s view, the Respondent has not rebutted this prima facie evidence. Here, the fact that the Complainant’s Trademarks are registered in certain classes and that the disputed domain name is not used for activities related to those classes does not give to the Respondent a right or a legitimate interest in the disputed domain name under the UDRP.
The Panel finds that the Respondent has no rights and no legitimate interests in the disputed domain name.
The second criterion has been met.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) having 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 you have engaged in a pattern of such conduct; or
(iii) having registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and is used in bad faith.
Upon considering the fame and goodwill associated with the DELOITTE Trademarks and the number of countries, including France where the Respondent resides and in which the Complainant or its members or affiliates are actively engaged, this Panel cannot see any plausible reason or excuse for the Respondent’s ignorance of the Complainant’s DELOITTE Trademark rights and registering the disputed domain name other than to profit from the fame associated with the DELOITTE Trademarks.
The Panel adopts the observations of the absence of “credible reason for doing so” as expressed in Deloitte Touche Tohmatsue v. Open Water Enterprises Limited, Louise S., supra, and agrees with and adopts the views of the panel in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra, in holding that the disputed domain name herein is so obviously connected with such well-known accounting activities that its very use by someone, the Respondent in the present instance, with no connection with the activities suggests opportunistic bad faith.
The Panel finds that the disputed domain name was registered in bad faith.
In representing the Respondent’s passive holding of the disputed domain name and the reliance in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Comerica Inc. v. Horoshiy, Inc.,supra, along with the fact that the Respondent did not establish any legitimate rights or interests in the disputed domain name and that he failed to respond to the two communications from the Complainant prior to the commencement of these proceedings, the Complainant has successfully convinced this Panel to conclude that the Respondent registered and used the disputed domain name in bad faith.
The Panel finds that the disputed domain name was used in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <deloittefoundation.com> is confusingly similar to the Complainant’s Trademarks;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <deloittefoundation.com> be transferred to the Complainant.
J. Nelson Landry
Dated: March 31, 2011