WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative; KPMG LLP v. Sana Arif
Case No. D2014-2187
1. The Parties
Complainants are KPMG International Cooperative of Amstelveen, The Netherlands, and KPMG LLP of New York, New York, United States of America (“U.S.”), represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
Respondent is Sana Arif of New York, New York, U.S.
2. The Domain Name and Registrar
The disputed domain name <kpmg.nyc> (the “Domain Name”) is registered with Go Australia Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2014. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2015.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 23, 2015. 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 KPMG network provides audit, tax and advisory services through KPMG member firms under the KPMG trademark. These member firms are affiliated with Complainant KPMG International Cooperative. Complainant KPMG LLP is the member firm of the KPMG network in the U.S. KPMG International Cooperative owns the KPMG trademark and licenses it to KPMG member firms worldwide, including KPMG LLP. The network has been using the KPMG trademark for the past 27 years.
KPMG International Cooperative owns over 480 trademark registrations worldwide containing “KPMG”. These include U.S. Registration Number 2,339,547 for KPMG that issued on April 11, 2000 (the “KPMG Mark” or the “Mark”). The global and member firm KPMG websites currently operate mainly under the domain name <kpmg.com>.
The KPMG member firms operate in 155 countries with over 155,000 professionals. KPMG LLP operates in the U.S. where it has 82 offices with around 23,000 partners and staff, including in New York City. Fortune magazine has ranked KPMG one of the Best Companies to Work For (from 2009 to 2012, and in 2014) and Byte Level Research has ranked its website among the Best Global Websites (2013 and 2014).
Respondent registered the Domain Name on October 8, 2014.
5. Parties’ Contentions
Complainants have rights in the KPMG Mark, including in the U.S., which other UDRP Panels have recognized. The Mark is inherently distinctive and non-descriptive and is famous throughout the world. The Domain Name consists of KPMG, which is identical to the KPMG Mark, combined with the new generic Top-Level Domain (gTLD) “.nyc”. The gTLD should be disregarded or it clearly denotes the geographic term New York City.
The Domain Name redirects to a parked webpage of GoDaddy. Complainants’ counsel first contacted Respondent by letter on October 31, 2014. After that, Complainants’ counsel had a phone conversation with Respondent on November 10, 2014. He sent Respondent a summary of that conversation by email the same day, which Respondent has not contested. Respondent stated: (1) she registered the Domain Name because KPMG is her favorite company, and she wanted to protect the company so no-one else could use the Domain Name except KPMG; (2) However, she wanted USD 9,000 from KPMG for the Domain Name because she registered it and needed the money; (3) after the representative explained that KPMG had a legal claim against her and that they were entitled to recover the Domain Name from her without any payment, Respondent claimed she also had a company with the acronym “KPMG”. She could not say what the acronym stood for or what her company did; and (4) Respondent stated the Domain Name registration cost her USD 100.
Respondent has registered a number of other “.nyc” domain names incorporating other famous third-party brands (e.g., <deloitte.nyc>, <wellsfargo.nyc>, <mattel.nyc>, and <buzzfeed.nyc>). Whether before any notice to Respondent of the dispute or otherwise, there is no credible evidence that Respondent has used, or has made demonstrable preparations to use, the Domain Name or a name corresponding to it for a bona fide offering of goods or services. Respondent does not have legitimate rights in the KPMG Mark and is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to KPMG or a competitor for valuable consideration in excess of her out-of-pocket costs directly related to the Domain Name. Also, Respondent registered the Domain Name to prevent KPMG from reflecting the Mark in a corresponding Domain Name and Respondent has engaged in a pattern of such conduct. Use of the Domain Name will disrupt the business of the KPMG network by misleading members of the public into believing the Domain Name and any website to which it redirects are connected with KPMG and it will otherwise impede members of the public searching for genuine KPMG websites. If Respondent obtains any advertising revenue using the Domain Name in connection with the GoDaddy parked webpage, she will be using the Domain Name for commercial gain.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainants prove each of the three elements set forth therein to obtain an order that the Domain Name should be cancelled or transferred.
A. Identical or Confusingly Similar
It is uncontested that Complainants have established worldwide rights in their well-known KPMG Mark long before Respondent registered the Domain Name on October 8, 2014. These rights were established by use and through trademark registrations including U.S. Registration Number 2,339,547 for KPMG that issued on April 11, 2000 and reflects a date of first use in commerce of 1987.
The Domain Name consists of the Complainants’ KPMG Mark in its entirety and the gTLD suffix “.nyc”. It is an accepted principle that the addition of suffixes such as “.nyc”, being a gTLD, is not a distinguishing factor. Consequently, the Panel finds that the Domain Name is identical to Complainants’ KPMG Mark.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants contend that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainants have not licensed or otherwise permitted Respondent to use the KPMG Mark in any manner, including as a domain name. Furthermore, there is no evidence that Respondent has been commonly known by the Domain Name or that she is using the Domain Name in connection with a bona fide offering of goods or services. It also appears that Respondent is not making a legitimate noncommercial or fair use of the Domain Name insofar as the website is parked with sponsored links, from which Respondent could be deriving income, and Respondent is using the site to sell the Domain Name.
Complainants have raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainants have carried their burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainants, that Respondent has registered and used the Domain Name in bad faith. Complainants’ long-standing and well-known rights in the KPMG Mark are uncontroverted, as are the facts that Complainants have an office in New York City (where Respondent is based) and Respondent registered the Domain Name well after Complainants established their rights in the Mark worldwide. Respondent registered the Domain Name <kpmg.nyc>, which is identical to Complainants’ well-known KPMG Mark, without any rights or legitimate interests in the Domain Name. In addition to these facts, the Panel has also considered the fact that Complainants’ KPMG Mark is recorded with the Trademark Clearinghouse and pursuant to that recordation, Respondent was provided with notice of Complainants’ rights in the KPMG Mark before she registered the Domain Name. See International Business Machines Corporation v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1419 (noting “that notifications from the Trademark Clearinghouse, while not conclusive on the issue, can be considered indicia of bad faith registration because the registrant has been put on notice of the trademark holder’s rights.”) There is sufficient evidence to conclude that Respondent registered the Domain Name in bad faith.
For the purposes of paragraph 4(a)(iii) of the Policy, one of the circumstances that shall be evidence of the registration and use of a domain name in bad faith is:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
Respondent used the Domain Name on a site that was parked for free with GoDaddy.com to, among other things, sell the Domain Name. Complainants verified Respondent’s intention to sell the Domain Name when their counsel called Respondent and she offered to sell the Domain Name for USD 9,000, while having paid only USD 100 for it. Thus the Panel finds that Respondent no doubt registered and was certainly using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of it to Complainants or another party for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. This conduct constitutes bad faith under the Policy.
Complainants also argue that Respondent has engaged in bad faith conduct because as soon as the “.nyc” gTLD became available, Respondent registered the Domain Name and a number of other domain names with the “.nyc” gTLD including ones that incorporate other well-known trademarks such as <deloitte.nyc>, <wellsfargo.nyc>, <mattel.nyc>, and <buzzfeed.nyc>. The Panel finds that these registrations constitute a pattern of conduct for the purposes of paragraph 4(b)(ii). See Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For 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.nyc> be transferred to Complainant KPMG LLP.
Harrie R. Samaras
Date: January 26, 2015