WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Deloitte Daniel, Deloitte Consulting / Whois Privacy (enumDNS dba)
Case No. D2015-1901
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 Deloitte Daniel, Deloitte Consulting of Victoria, Seychelles / Whois Privacy (enumDNS dba) of Munsbach, Luxembourg.
2. The Domain Name and Registrar
The disputed domain name <deloitte.consulting> is registered with EuroDNS S.A. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2015. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2015.
The Center verified that the Complaint together with the amended 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 November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on December 10, 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 Complaint was originally filed against a domain name privacy service (Whois Privacy). Following confirmation by the Registrar of the listed details for the Respondent, the Complainant submitted an amended Complaint against "Deloitte Daniel of Deloitte Consulting" – the name of the listed registrant of the disputed domain name.
The Complainant is the owner of registered marks for DELOITTE. These include marks registered in the United States of America including for DELOITTE (registered in 2005), DELOITTE & TOUCHE (registered 1997 in class 9 and 1989 in class 36).
The Complainant also is the registrant of domain names incorporating that mark, including <deloitte.com>, which it has maintained since 1995. The Complainant owns the domain name <deloitteconsulting.com>, used for a website providing information about the DELOITTE consulting services.
Under that mark, or related marks, the Complainant's licensees provide audit, consulting, financial advisory, risk management and tax services to its clients. The Complainant and its member firms, all of which use the DELOITTE marks, employ more than 225,000 people in over 150 countries. In the fiscal year 2015, the Complainant's member firms attained aggregate revenues of USD 35.2 billion.
The Complainant has been a successful complainant in past proceedings under the Policy relating to domain names incorporating its mark. Past panels have recognized that the Complainant's DELOITTE mark has been "used extensively by Complainant and its worldwide member firms since at least 1989": Deloitte Touche Tohmatsu v. Moniker Privacy Services / Dan Booker, Total Net Solutions, WIPO Case No. D2008-1489.
As confirmed by the Registrar, the Respondent registered the disputed domain name on March 23, 2015.
The Complainant provides evidence that, although the Respondent claims to be from an entity named "Deloitte Consulting", located in the Seychelles, no such business or entity has been registered to do business in the Seychelles. The Complainant also provided evidence that, although the Respondent's name is listed as "Deloitte Daniel", a Google search for "Deloitte Daniel" and "Daniel Deloitte" in the Seychelles returned no relevant results.
The Complainant also provided evidence that, as at October 23, 2015, the disputed domain name did not revert to an active website.
5. Parties' Contentions
The Complainant says that the Respondent has provided false contact details, and there is no reason to believe that the Respondent is commonly known by the name "Deloitte Daniel of Deloitte Consulting" or that any organization by the name "Deloitte Consulting" operates in the Seychelles.
The Complainant registered its DELOITTE trademark with the Trademark Clearinghouse. Because of this, when the Respondent attempted to register the disputed domain name, it would have received a "warning notice" from the Trademark Clearinghouse. Despite having received this notice the Respondent proceeded with its registration of the disputed domain name, fully aware that the registration conflicted with the Complainant's DELOITTE trademark registration.
The Respondent is aware of the Complainant's objections to the registration of the disputed domain name. On October 7, 2015, the Complainant's counsel sent a cease-and-desist letter by email to the Respondent via the Respondent's privacy protection service. The Complainant's counsel received no response.
In relation to the first element of the Policy, the Complainant points to its numerous trademark registrations, which it says it has been using since at least as early as 1989. The Complainant says that the disputed domain name incorporates the Complainant's DELOITTE trademark in its entirety, making it confusingly similar to the Complainant's mark. The disputed domain name also corresponds directly to the Complainant's DELOITTE CONSULTING trademark. The generic Top-Level Domain ("gTLD") in this case also exacerbates the likelihood of confusion.
In relation to the second element of the Policy, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent's registration of the disputed domain name came after the Complainant had made extensive use of its mark and after it had obtained registrations for the DELOITTE marks around the world. The fact that the Respondent is using the disputed domain name in connection with a website that offers links to the Complainant's competitors establishes that the Respondent is fully aware of the Complainant and its marks. [The Complainant did not explain how this claim squared with its evidence that the disputed domain name did not revert to an active website.] There is otherwise no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization for the Respondent to own or use the disputed domain name.
In relation to the third element of the Policy, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Respondent failed to make its contact information records available, instead using a privacy service. The Respondent purposely concealed its identity to make it difficult for a third party to lawfully pursue the disputed domain name. There is also no basis for the Respondent to have chosen the disputed domain name unless the Respondent was seeking to create an association with the Complainant. Given the fame of the Complainant's marks, consumers are likely to believe that the disputed domain name is related to or associated with the Complainant.
The Complainant says that the Respondent's activity is a direct violation of paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. The disputed domain name is not associated with an active website, which has long been recognized as bad faith in and of itself.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires the Complainant to, firstly, demonstrate that it has rights in a trademark or service mark. The Complainant provides evidence of trademark or service mark registrations for DELOITTE (in a large number of jurisdictions), DELOITTE CONSULTING (in the Benelux), VB/DELOITTE & TOUCHE and DELOITTE CONSULTING (in the Benelux), and DELOITTE & TOUCHE (in the United States of America). That evidence demonstrates that the Complainant relevantly "has rights" for the purpose of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(i) secondly requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The Complainant primarily advances its argument in respect of its marks for DELOITTE and DELOITTE CONSULTING, and the Panel has considered the case on this basis.
It is self-evident that the disputed domain name is relevantly identical to the Complainant's DELOITTE CONSULTING mark.
The Panel also considers that the disputed domain name is confusingly similar to the Complainant's DELOITTE trademark. In this latter respect, the disputed domain name wholly incorporates the Complainant's mark, and adds the word "consulting" as the gTLD extension. As mentioned in the Complaint (by reference to prior panel authority), past UDRP panels have considered the gTLD extension in cases where the extension reinforces a finding of confusing similarity. While more long-standing gTLD extensions such as ".com" and ".org" (being only technical components of a domain name) are not usually considered in a determination of confusing similarity, extensions which are based on common words perform more than a technical function. They are obviously designed to carry a meaning. In this case, the word "consulting" is obviously one closely associated with the Complainant's business. As such, the addition of that term only serves to increase the risk of confusion with the Complainant's DELOITTE trademark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. A prima face case is one which appears credible on its face. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has established a strong prima facie case against the Respondent. The Complainant has well-known marks registered in a large number of jurisdictions. As noted above, the disputed domain name wholly incorporates and is confusingly similar to the Complainant's DELOITTE trademark and is identical to the Complainant's DELOITTE CONSULTING trademark. The disputed domain name does not revert to an active website. The Respondent provided no Response, and so has provided no evidence to rebut the arguments against it. Neither is there any evidence of the Respondent's business or potential connection with the disputed domain name.
The case file indicates that the disputed domain name is registered in the name of "Deloitte Daniel of Deloitte Consulting". If the Respondent were commonly known by that name, this would provide a basis for a finding that the Respondent had a right or legitimate interest. Relevantly, paragraph 4(c)(ii) of the Policy provides that a respondent may demonstrate that it has rights or legitimate interests where "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".
There is however little information in the case file to indicate that the named Respondent is an entity in-fact, or is "commonly known" by the name under which the disputed domain name is registered. The registration details for a domain name are, at the end of the day, a matter for the Respondent. The Panel has no evidence to suggest that any such details are independently verified. In addition, the Complainant asserts that the Respondent has provided false contact details, which has not been rebutted by the Respondent. If the Respondent was commonly known by that name, it would have been a simple matter to demonstrate it, by providing some form of identity documentation. The Respondent has chosen to submit no such evidence.
There is otherwise no evidence in the case file to indicate that the Respondent has rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name was registered and has been used in bad faith. Bad faith may be found where the Respondent registered and used the disputed domain name to take unfair advantage of the Complainant's rights in some way. See e.g. Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058.
There is no direct evidence in this case of the Respondent's motivations in registering and then using the disputed domain name by passively holding it (it is well-established under the Policy that a respondent's inactivity in passively holding a domain name may, in appropriate circumstances, be a bad faith "use" of it. As noted also by the Complainant, see Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
But the indirect evidence is strongly suggestive that the Respondent has registered and used the disputed domain name in bad faith. The Complainant's marks are well-known and have been recognized in previous decisions under the Policy: most recently, see Deloitte Touche Tohmatsu v. Richard Yaming, Trademark Worx, LLC, WIPO Case No. D2014-1360. The disputed domain name which the Respondent has registered is identical to one of the Complainant's marks, and confusingly similar to others. There is otherwise no evidence of the Respondent having rights of its own in the disputed domain name, nor of operating a legitimate business. The disputed domain name does not revert to an active website. The Complainant has also registered its mark with the Trademark Clearing House and, as such, the Respondent would have received an automatic notification of the Complainant's rights when it registered the disputed domain name. Having regard to these facts, the Panel considers that the Respondent must have been aware of the Complainant's mark and sought to take advantage of an association with it. As noted above, if the Respondent had any genuine interest in the disputed domain name, it should have been a simple matter to demonstrate it.
The Respondent has chosen to submit no response. Under paragraphs 5(e) and 14(a) of the Rules, where a Respondent does not submit a response the Panel shall decide the dispute on the Complaint. Under paragraph 14(b) of the Rules, in the absence of exceptional circumstances, the Panel may also draw such inferences from the Respondent's default as it considers appropriate. In the circumstances of this case, the Panel considers that there are no exceptional circumstances, and draws the inference that the Respondent has not submitted a Response because it does not deny the claims made against it.
Accordingly, the Panel finds that the disputed domain name was registered, and has been used, 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 <deloitte.consulting> be transferred to the Complainant.
James A. Barker
Date: December 24, 2015