WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Richard Yaming, Trademark Worx, LLC
Case No. D2014-1360
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 Richard Yaming, Trademark Worx, LLC of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <deloittetax.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2014. On August 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on September 12, 2014. 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 in the United States of America and elsewhere around the world (each under written license from the Complainant) have been using the DELOITTE trademarks since at least as early as 1989. DELOITTE is a brand under which tens of thousands of dedicated professional in independent firms throughout the world collaborate to provide audit, consulting, financial advisory, risk management and tax services to selected clients. The Complainant maintains an Internet website at “www.deloitte.com”, providing the technology platform for its global website and for country-specific websites around the world, including the site of its member firm in South Korea.
The disputed domain name was created on January 24, 2012. As results from the evidence adduced by the Complainant, the disputed domain name was used at the date of the Complaint in relation to pay-per-click webpage redirecting Internet users to websites that directly compete with the Complainant and its licensees. The webpage to which the disputed domain name resolves displayed an announcement stating that the disputed domain name is listed for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s famous trademarks DELOITTE and DELOITTE & TOUCHE for which the Complainant has obtained numerous worldwide registrations and United States federal trademark registrations. The disputed domain name is confusingly similar to the DELOITTE trademarks as the disputed domain name consists of nothing more than the DELOITTE trademark, the generic term “tax” and the generic Top-Level Domain (“gTLD”) “.com”. Given the reputation and renown of the Complainant’s DELOITTE trademarks, most Internet users who see the infringing disputed domain name are likely to immediately recognize the Complainant’s trademarks and assume that the disputed domain name and the website associated with it is owned, controlled or approved by the Complainant.
In addition, the Complainant contends that it has no relationship with the Respondent that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the DELOITTE trademark or any confusingly similar name. There is no evidence that the Respondent has ever been known by the disputed domain name and the only apparent interest in the disputed domain name is to misdirect Internet traffic to the Complainant’s competitors and other third party websites so that it can generate pay-per-click revenue. Such use demonstrates neither a bona fide offering of goods or services, nor a legitimate interest.
Moreover, the Complainant asserts that since the Complainant’s trademark is one of the most famous trademarks in the financial world, it is inconceivable that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name. The mere fact that the Respondent registered the disputed domain name without authorization is, in and of itself, evidence of bad faith registration. The Respondent’s exploitation of the Complainant’s goodwill for financial gain by creating a likelihood of confusion demonstrates the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notification of Proceedings to Respondent
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint and the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center employed reasonably available means to notify the Respondent of the filing of the Complaint and initiation of these proceedings in accordance with paragraph 2(a) of the Rules, and that the failure of the Respondent to submit a response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
In view of the Respondent’s default in providing a response to the allegations of the Complainant, the Panel may decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)). Pursuant to paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).
In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
(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;
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of the trademark DELOITTE registered in the United States of America under number 3002108 on September 27, 2005 for the classes 9, 35, 36, 42 of goods and services, and of the trademark DELOITTE & TOUCHE registered in the United States of America under number 1602793 on June 19, 1990, for the class 36 of services. This Panel is satisfied that the Complainant is the owner of the DELOITTE registered trademark.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name has two differences from the trademark DELOITTE of the Complainant: the addition of the term “tax” and “.com” as suffix to the trademark.
The addition of the gTLD “.com” is without legal significance from the standpoint of comparing the disputed domain name to DELOITTE. Since use of a gTLD is required of domain name registrants, and “.com” is one of only several such gTLDs. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Apart from the gTLD, the disputed domain name consists of the Complainant’s well-known trademark DELOITTE (the well-known character of the Complainant’s trademark was held before, see for example Deloitte Touche Tohmatsu v. Supervision Audio Video Inc Search-Universal.com, WIPO Case No. D2011-0187) and the suffix “tax”. The term is of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term “deloitte”. When a disputed domain name incorporates, as here, the entirety of a complainant’s trademark – and a well-known trademark – the addition of common terms does not serve to distinguish adequately the disputed domain name from the mark. See also F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a disputed domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Namely, the Panel notes that the Respondent is not commonly known by the disputed domain name and that the Respondent registered and began using the disputed domain name after the Complainant had registered the trademark DELOITTE.
By not submitting a response, the Respondent has failed to overturn such prima facie case. Absent any response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use any of its trademarks incorporating the element “Deloitte” (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use).
Further, the Panel notes that the disputed domain name is used to direct to a portal website with sponsored links to websites of companies providing services in competition with the Complainant. It is therefore apparent that the disputed domain name is used by the Respondent to unfairly capitalize upon the Complainant’s trademark (see mainly Owens Corning v. NA, WIPO Case No. D2007-1143 and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, on the mechanism of “domain name parking” or “pay-per-click” services).
While it is accepted use for a domain name to be used for advertising purposes, it has been established that “if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name” (Paris Hilton v. Deepak Kumar, supra; see also Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are illustrative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.”
The Panel notes that at the time of the disputed domain name registration, the Complainant was already established and had been carrying out its business in association with the well-known trademark DELOITTE. It would be improbable for the Respondent not to have been aware of the Complainant’s reputation and business.
Further, the fact that the disputed domain name is used for a website, displaying sponsored links for third party websites that offer competing services to those offered by the Complainant, shows that the Respondent is free-riding on the goodwill and reputation associated with the Complainant’s trademarks and business with the apparent intention of obtaining pay-per-click royalties, and at the same time disrupts the Complainant’s business by diverting Internet users to competing websites.
It is established practice that such use be considered to demonstrate bad faith (see, for example, Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Institut Merieux v. Summit Services LLC, WIPO Case No. D2011-0974; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include the fact that the Respondent did not respond to the Complaint and did not provide accurate contact details to the Registrar.
Moreover, the Respondent appears to have been involved in several UDRP cases with similar factual background and all cases were decided in favor of the complainants. See, for example, Giorgio Armani S.p.A, Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Richard Yaming, WIPO Case No. D2011-2233 for the domain name <armanihotel.com>; O2 Holdings Limited v. Richard Yaming, WIPO Case No. D2012-0508 for the domain names <o2-media.com>, <o2soft.com>, <o2sport.com>; DHL International GmbH v. Richard Yaming, WIPO Case No. D2012-1081 for the domain name <dhlpaket.com>; Arcadia Group Brands Limited, trading as Topshop v. Richard Yaming, WIPO Case No. D2012-1490 for the domain name <mytopshop.com>; Moncler S.p.A. v. Trademark Works, Richard Yaming, WIPO Case No. D2014-0503 for the domain name <monclerdoudoune.com>; or Logic Design v. Richard Yaming, WIPO Case No. D2013-1120, for the domain name <logic-design.com>.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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<deloittetax.com> be transferred to the Complainant.
Date: September 26, 2014