WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. Valentin Berger

Case No. D2017-1291

1. The Parties

The Complainant is KPMG International Cooperative of Amstelveen, the Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).

The Respondent is Valentin Berger of Basel, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <home-kpmg.com> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2017. On July 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2017.

The Center appointed Christian Schalk as the sole panelist in this matter on August 8, 2017. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is one of the world’s leading providers of audit, tax and advisory services. The Complainant and its member firms provide their services under the trademark KPMG in a range of sectors, including the real estate industry. The KPMG group of companies operate in approximately 150 countries with over 189,000 employees. The Complainant has been ranked for many years as one of the “Big Four” professional service firms, together with Deloitte, Ernst & Young (EY), and PricewaterhouseCoopers (PwC). The Complainant’s brand KPMG has been consistently ranked among the world’s top brands for many years.

The Complainant owns over 480 trademark registrations containing the name KPMG throughout the world, for instance:

- European Union trade mark registration No. 001011220 for the word mark KPMG, registration date April 25, 2000, covering goods and services in the International Classes 9, 16, 35, 26, 41 and 42;

- International Registration No. 725892 for the word mark KPMG, registration date October 7, 1999, covering goods and services in the International Classes 9, 16, 35, 26, 41 and 42;

- United States of America trademark registration No. 2339547 for the word mark KPMG, registration date April 11, 2000, covering goods and services in the International Classes 9, 16, 35, 26, 41 and 42.

The Complainant’s trademark rights have been recognized also by UDRP panels in a number of domain name decisions between 2006 and 2016, for instance, KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; KPMG International Cooperative v. Dave Rosenbom James, WIPO Case No. D2012-1072; and KPMG International Cooperative v. Astrid Constant, WIPO Case No. D2016-0972.

The Complainant operates its Internet activities under the domain name <kpmg.com>.

The Respondent registered the disputed domain name on May 23, 2017. The disputed domain name previously resolved to a website offering real estate services. The disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the KPMG trademark. The Complainant states that the name KPMG is identical to the distinctive and famous KPMG trademark and is the dominant and principal component of the disputed domain name. The Complainant argues further that the combination of the word “home” with the name KPMG conveys the meaning that the disputed domain name relates to services offered by KPMG, or an economic undertaking otherwise connected with the Complainant, whether in relation to the real estate industry, in relation to a “homepage” for the Complainant, or otherwise.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues in this context that the disputed domain name was registered on May 23, 2017, and therewith many years after the establishment of the Complainant’s well-known KPMG mark. The Complainant contends further that the disputed domain name redirects to a fraudulent fake website which purports to offer services in the real estate industry. The Complainant presents in this context before the Panel a printout of the website to which the disputed domain name resolved on July 4, 2017. This printout shows the term “KMPG RE® International Real Estate” in a prominent way on the top left of the website. Furthermore, this website reproduced texts and images from websites of genuine real estate service providers such as Knight Frank, Chesterton, Streets Ahead and Outlet. The website to which the disputed domain name resolves displays also images of Streets Ahead employees which have been apparently taken from the Streets Ahead’s corporate website. These images featured originally also the names of these employees but have been replaced by other names on the Respondent’s website. The Complainant asserts also that the Respondent fraudulently claims on its website that its headquarters are at the same physical address corresponding to the London headquarters of the Complainant’s UK business. The Complainant reports in addition that the Complainant has been contacted by a victim of a scam which has apparently been operated by the Respondent. The Complainant explains that on or around June 20, 2017, the Respondent misled that victim into transferring the amount of EUR 2,252 by way of a deposit for a fake property viewing. For all this the Complainant concludes that the Respondent is using the disputed domain name in connection with a fraudulent website, that there is no credible evidence of the Respondent’s use of, or 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, that there is no evidence that the Respondent has been commonly known by the disputed domain name and that there is no credible legitimate basis on which the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant alleges furthermore, that the disputed domain name was registered and is being used in bad faith. The Complainant believes in this context that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its fraudulent website, by creating a likelihood of confusion with the Complainant’s famous KPMG mark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant argues further that the Respondent’s registration, fraudulent use, and any other use, of the disputed domain name will disrupt the business and image of the KPMG network by misleading members of the public into believing that the disputed domain name, the fraudulent website, and any other website to which it might redirect, are connected with KPMG, and/or it will otherwise impede members of the public searching for genuine KPMG websites.

B. Respondent

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

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:

(i) the disputed domain name 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. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademark KPMG to which the disputed domain name is confusingly similar.

It has been decided by previous UDRP panels, that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). As far as the trademark KPMG is concerned, it is featured in its entirety in the disputed domain name.

Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Yahoo! Inc. v. Feiji Gao, WIPO Case No. D2013-0521; Yahoo! Inc. v. Yang Zhi, WIPO Case No. D2013-0522; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

In this case, the word “home” is a common term in the English language. Its combination with the term KPMG may convey the meaning that the disputed domain name relates to services offered by the Complainant in the field of real estate. Therefore, the addition of the term “home” in the disputed domain name does not avoid confusing similarity with the Complainant’s trademark. Therefore, the only distinctive element in the disputed domain name consists of the term “KPMG”, which is identical to the Complainant’s trademark.

The inclusion of a hyphen in the disputed domain name between the words “home” and “KPMG” does not alter this assessment. As previous UDRP panels have stated in similar cases, the use of a hyphen is irrelevant for the purposes of differentiating the Complainant’s trademark from the disputed domain name (see, for instance, Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043).

Furthermore, the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar to the KPMG trademark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” may be disregarded when determining if there is identity or confusing similarity between a disputed domain name and the Complainant’s trademark. Where a domain name incorporates the complainant’s mark, this is typically sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”); Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

However, the Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.

The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent’s website, to which the disputed domain name resolves reproduces texts and employee images from websites of competitors of the Complainant in the real estate business. Furthermore, the address which the Respondent claims on its website to be the address of its headquarters is in fact the address of the Complainant’s London headquarters. According to the documents brought before the Panel, this website has apparently mislead a person to transferring an amount of EUR 2,252 by way of a deposit for a property viewing which in fact never took place. Such fraudulent behaviour cannot constitute any bona fide offering of goods and services. Therefore, the only apparent reason for the Respondent to register the disputed domain name was to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent’s website. Internet users who were redirected to the Respondent’s website believed that they were on a website of the Complainant and signed agreements and made payments which they would have certainly never made had they been aware of the true nature of this website.

The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. The Respondent used the term KMPG in a prominent way on the website to which the disputed domain name resolves. Furthermore, this website referred to real estate services which are similar to services also offered by the Complainant.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The disputed domain name resolved to a website where services in the field of real estate business are offered. On this website, the Complainant’s name KPMG was prominently displayed. The further content of this website such as texts and images and even pictures of employees were taken from websites of the Complainant’s competitors. In addition, Internet users who were redirected on this website either because they typed in the disputed domain name in their Internet browser or because they clicked on a link featuring the disputed domain name while searching for the Complainant’s services in the Internet, were easily mislead as to the owner of this website and the nature of the services offered there. At least in one case, a person apparently thought to be in contact with the Complainant while visiting the website, then subsequently signed a viewing appointment agreement and transferred a substantive amount of money by way of deposit to the Respondent for a property viewing which then never took place. The Panel is convinced that had this person been aware of the true nature of this website, this person would have certainly neither signed any agreement nor transferred any amount of money to the company, pretending being behind such website.

The Panel believes therefore, that the only purpose for registering the disputed domain name by the Respondent was, to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s KPMG trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details for the administrative contact and the technical contact given in the WhoIs record for the disputed domain names and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach such contacts in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Given all facts and circumstances of this case, the Panel finds that it is impossible to conceive of any plausible legitimate use of the disputed domain name by the Respondent. The Panel finds, therefore, that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <home-kpmg.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: August 20, 2017