WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. MCO Associate, Inc., Warren Turner
Case No. D2011-0463
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 MCO Associate, Inc., Warren Turner of Georgia, United States of America internally represented by itself.
2. The Domain Name and Registrar
The disputed domain name <deloittealumni.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 11, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On March 11, 2011, Register.com transmitted by email to the Center its verification response confirming:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the contact details for the Respondent;
(d) English is the language of the registration agreement; and
(e) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration.
The Complainant filed an amended Complaint on March 24 and 25, 2011. The Center verified that the Complaint and amended Complaint satisfied the formal requirements of 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 March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. By email dated April 1, 2011, the Respondent sought an extension of time in which to file the Response. After communicating with the parties, on April 13, 2011, the Centre granted an extension of time for the filing of any Response to April 22, 2011. The Response was filed with the Center on April 22, 2011.
On April 26, 2011, a Supplemental Filing from the Complainant was submitted.
On May 2, 2011, a Supplemental Filing from the Respondent was submitted.
The Center appointed Warwick Rothnie as the sole panelist in this matter on May 17, 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 and its member firms are an association providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names “Deloitte Touche Tomatsu” and “Deloitte & Touche”.
As at the date of the Complaint, the Complainant and its member firms employed more than 170,000 people in more than 140 countries.
In fiscal year 2010, the Complainant’s member firms generated revenues in aggregate of USD26.6 billion.
The Complainant and its member firms constitute one of the “big four” international accountancy practices.
According to the Complaint, the Complainant and its member firms have been using the trademark “Deloitte & Touche” since 1989.
The Complainant has numerous registrations for the trademarks DELOITTE and DELOITTE & TOUCHE in many countries throughout the world. These registered trademarks generally cover international classes 9, 35, 36 and 42.
They include two registrations in the USA for DELOITTE & TOUCHE:
TM No. 1,602,793, in respect of a range of financial analysis and consulting services registered on June 19, 1990;
TM No. 2,052,869 for computer programs connected with business administration and financial related activities from April 15 1997,
and a third registration in the USA for DELOITTE for a range of goods and services in international classes 9, 35, 36 and 42 registered on September 27, 2005.
The Respondent’s principal, Mr Turner, apparently worked in the past for Andersen Consulting, but has never worked for the Complainant or any of its member firms.
The Respondent registered the disputed domain name on August 15, 2002.
It has never resolved to an active website. It would appear that, before the Complainant sent a letter of demand to the Respondent in July 2009, the domain name resolved to a webpage containing “click-through” links. The Respondent through its attorney, claimed this was done without its knowledge. Upon receipt of the letter of demand, this webpage was removed and the disputed domain name now resolves to a placeholder webpage which states “under construction – coming soon”.
The Respondent is also the holder of the domain name Andersenalumni.com and that domain name does resolve to a website headed Andersen Alumni which states on its homepage “Welcome to your Alumni Network”.
“Social network for reuniting formal employees for Andersen LLP and Andersen worldwide.
There are a number of active links on that website to a number of information pages but many of the services available through it require registration.
5. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark to which he has rights;
(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
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Complainant has requested permission to file a supplemental submission. The Rules do permit panels to request further information. Whether or not unsolicited supplementary materials are accepted into the record however falls within the discretion of the Panel. As the Complaint’s request acknowledges, that discretion is typically exercised in favor of acceptance where the Response raises matters which the Complainant could not reasonably have anticipate or to correct factual errors.
The proposed supplemental filing does not fall into either of those categories; accordingly, the Panel declines to accept it into the record. As a result, it is unnecessary to admit the Respondent’s proposed supplemental filing as well.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has provided sufficient evidence of the registration of many trademarks throughout the world principally for DELOITTE & TOUCHE and also including 2 registrations for DELOITTE alone. In addition, the Complainant has rights at common law in at least DELOITTE & TOUCHE and, the Panel accepts, DELOITTE.
The disputed domain name is not identical to the rights established by the Complainant, the second question, therefore is whether the disputed domain name is confusingly similar to the Complainant’s proven rights.
The Respondent points out that the Complainant does not own registered trademark rights or common law rights in “Deloitte Alumni”. The Respondent also points out that none of the Complainant’s registrations cover the social networking category or the Respondent’s field of business.
This latter contention of the Respondent misunderstands the nature of the inquiry. On this part of the inquiry, what is required is simply a comparison of the Domain name itself to the Complainant’s proven trademark rights: see for example Disney Enterprises, Inc. v John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Ikb Deutsch Industry Bank AGV. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require an assessment of the nature of the goods and services or those for which any impugned use is involved. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
On this question, the addition of the gTLD to the disputed domain name can be disregarded as simply a functional requirement of the domain name system.
The Panel finds that the expression “Deloitte Alumni” is clearly confusingly similar to Complainant’s proved trademark rights, both the registered rights in DELOITTE and DELOITTE & TOUCHE and the common law rights. The addition of the descriptive term “Alumni” to Deloitte clearly indicates some sort of link or association with the Complainant’s and its rights. It is true, as the Respondent contends, that Alumni Organizations are sometimes or even often set up and run independently of their parent or source organization. However, it is also true that many professional services firms and other organizations set up and sponsor their own organizations for their alumni. In these circumstances, the Panel considers that a notional Internet user aware of the Complainant’s trademarks would be likely to assume some sort of link or association between the Complainant and the organization behind the disputed domain name. This is equally true of trademarks DELOITTE & TOUCHE as well as DELOITTE alone as the word DELOITTE is the first element of the composite expression and the Complainant and its member firms are regularly referred to by the business world simply by the first word in its name.
Accordingly, the Complainant has established the first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests in the policy in the circumstances set out in paragraph 4(c) of the policy.
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The circumstances set out in paragraph 4(c) of the Policy are examples only and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where the respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the Complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0)), paragraph 2.1.
The Complainant points out that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s trademarks in any other way. Nor is there evidence that the Respondent has ever been known by the disputed domain name or "Deloitte”.
Taken together these matters are sufficient to raise a prima facie case against the Respondent.
The Respondent does not dispute any of these matters. Instead, the Respondent claims that he was requested by alumni of the Complainant’s member firms to establish a social networking site because of his experience in establishing similar sites such as the website at “www.andersenalumni.com”. As already mentioned, the respondent notes that there are many alumni associations which are not endorsed by the parent or source of the alumni. The Respondent contends that neither it nor its website compete with the Complainant’s firms or operate in areas covered by the Complainant’s registered trademark. Accordingly the Respondent contends no license or authorization from the Complainant is necessary.
The Panel recently participated in a three member panel which considered very similar issues to the matters now raised by the Respondent: Pacific-10 v Kevin Lee, WIPO Case No. D2011-0200. The Panel will not repeat what was there said but refers to and adopts it for present purposes.
The Panel notes further that, when making an assessment of this type of issue, panels typically look to how the respondent is actually using the disputed domain name. Generally such an examination is necessary to asses whether the explanation is in good faith or being advanced as a pretext.
As acknowledged in the Pacific-10 case, supra, however, there may be situations where that approach need not be insisted on and, further, each case depends on its own facts and a careful consideration of particular context.
In the present case, the Respondent does appear to operate a genuine “Alumni” site at <andersenalumni.com>. This lends some credibility to its claim based on fair use in good faith. It appears that Mr Turner was actually an alumnus of Arthur Andersen.
Against that, the Respondent does not identify the individuals who Mr Turner claims asked him to create and operate an alumni site for Deloitte’s alumni. Moreover, most importantly, the disputed domain name has never resolved to an Alumni site even though the disputed domain name has been registered since August 2002: since 8 ½ years before the Complaint was filed. The Response does not provide any explanation for this long delay. Indeed, while the Response takes the position that no licence or authority is required from the Complainant, the attorney’s letter sent by the Respondent in answer to the letter of demand explained that the site was inactive pending license or approval from the Complainant. Until the Respondent received a letter of demand from the Complainant’s lawyers, the disputed domain name apparently resolved to a website which provided “click-through” advertising links and, since that letter of demand, the website is “under construction”. Further, after receipt of the letter of demand, Mr Turner from the Respondent contacted a tax partner at the Complainant’s U.S member firm with whom he had previously worked at Arthur Andersen and said that he would be looking to transfer the disputed domain name in exchange for payment for USD10,000 to cover his expenses.
In these circumstances, the Panel is not prepared to find that the Respondent would use the disputed domain name only for a genuine “alumnus” site. The Respondent has not used it in that way over a very extended period. On the contrary, it has been used for a “click through” advertising generator. The Panel is not prepared to find, therefore, that the Respondent is making a legitimate noncommercial or fair use of the domain name and, consequently, finds that the Respondent does not have rights for legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate is that the disputed domain name has been both registered and is being used in bad faith.
It is apparent that the Respondent was well aware of the Complainant and its trademarks before the Respondent registered the disputed domain name.
The factors which lead the Panel to conclude the Respondent has no rights or legitimate interest in the disputed domain name also lead to the Panel to conclude that the Respondent has registered the disputed domain name in bad faith and is also using it in bad faith. These include:
A) the very long period in which the disputed domain name has been inactive or passive (other than resolving to a page with “click through” advertising links);
B) the use of the disputed domain name to resolve to a page which had “click through” advertising links only;
C) the Respondent’s offer to transfer the disputed domain name to the Complainant for the sum of USD10,000 – a sum which is far in excess of the out of pocket costs referable to registration of the disputed domain name;
The Respondent does contend that the “click through” advertising links were put in place by the domain name host without the Respondent’s knowledge. Typically, the hosting service requires the domain name holder’s consent before embarking on such conduct and, in any event, the Respondent was in a position to prevent such use.
The Respondent also pointed out that it registered the disputed domain name in August 2002 which was 2.5 years before the Complainant’s first registration for DELOITTE alone identified in the Complaint. That argument does not address the fact that the Complainant’s many registered trademarks for DELOITTE & TOUCHE long predate August 2002 or that, by that date, the Complainant’s member firms were often, if not commonly, referred to by the public as DELOITTE alone.
Accordingly, the Panel infers from the record in this case that the Respondent registered the name to take advantage of the trademark significance of the term DELOITTE and so it was registered in bad faith. The factors already referred to also lead to finding that the disputed domain name is being used in bad faith. Accordingly, the Complainant has established the third requirement under the Policy.
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, <deloittealumni.com>, be transferred to the Complainant.
Dated: May 31, 2011