WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Astrid Constant
Case No. D2016-0972
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.
The Respondent is Astrid Constant of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <kpmg-attorneys.com> is registered with Register.IT SPA (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and confirming that French is the language of the Registration Agreement for the disputed domain name. The Center sent an email communication to the Parties on May 24, 2016, requesting the Complainant either to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or to submit the Complaint translated into French; or to submit a request for English to be the language of the administrative proceeding. The Respondent was also invited to make submissions in this regard. On May 24, 2016, the Complainant filed a request that English be the language of the administrative proceeding. The Respondent did not make any submissions in this regard.
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 in English and in French, and the proceedings commenced on May 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 20, 2016.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on June 27, 2016. 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 is a company in the "KPMG network" of companies; according to the Complaint KPMG member firms operate in 155 countries and employ more than 174,000 professionals (collectively, "KPMG".) KMPG is one of the "Big Four" professional service firms, and is a leading provider of audit, tax and advisory services. The Complaint asserts, and provides supporting evidence, that KPMG is a highly regarded and globally-known brand.
The Complainant asserts that it owns more than 480 trademark registrations containing the name "KPMG" throughout the world. These registrations include European Union Trade Mark KPMG, registered on April 25, 2000. The Complaint also refers to a number of prior UDRP decisions in favor of the Complainant and which recognized the Complainant's trademarks, and to the use of its trademarks in both the global and French websites of KPMG.
The disputed domain name was registered on May 3, 2016. The disputed domain name does not resolve to an active website, however, it is alleged to have been used in connection with a fraudulent email scheme.
The Respondent appears to be a woman residing in Paris, France.
5. Parties' Contentions
The Complainant asserts, as further explicated below, that all three elements of paragraph 4(a) of the Policy are satisfied and that the disputed domain name should be transferred to the Complainant.
In particular, the Complainant argues that the disputed domain name, by adding the generic word "attorneys" to its trademark, suggests that it relates to attorneys or lawyers working for or on behalf of KPMG, and that the disputed domain name is therefore confusingly similar to the Complainant's trademark.
The Complainant states the Respondent has no rights of legitimate interests in the disputed domain name. Further the Complaint alleges that although the disputed domain name currently resolves to an inactive website, it has been wrongly used as an email address for the purpose of a financially motivated "email scam".
Whereupon the Complainant concludes that the disputed domain name was clearly registered and used in bad faith and "undoubtedly for criminal commercial gain."
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language
The Center indicated in communications to the parties that the Registration Agreement for the disputed domain name was in French and enquired as to whether the Complainant wished to submit a French translation of the Complaint or to request that the proceeding be in English. The Complainant opted for a request that English be the language of the proceeding, pointing out that the disputed domain name is in English and that the "scam" email incident and related phone call it discovered was entirely in English. This said, the version of the Registration Agreement submitted as Annex 2 to the Complaint is in English said to be translated from the subsequent Italian text.
The Respondent was notified of the Complaint by the Center in both English and French, but has not answered the Complaint.
In these circumstances it is appropriate for the proceeding and this decision to be in English as requested by the Complainant, in accordance with paragraph 11(a) of the Rules.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name contains the entirety of the Complainant's widely known trademark followed by a hyphen and then the word "attorneys". The addition of the word "attorneys" does not diminish the confusing similarity between the disputed domain name and the Complainant's trademark and in some respects adds to the potential confusion as it suggests a reference to lawyers that are acting for or affiliated with KPMG, which is a huge provider of business and advisory services.
The Complainant has, accordingly, met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
A complainant is required to establish at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd. v. "osama bin laden", WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the instant case the Complainant asserts that it has never given any permission to the Respondent to use its trademarks in the disputed domain name, and that it has no knowledge or belief of any rights or legitimate interests of the Respondent in the disputed domain name. Furthermore, there is no evidence or indicia in the file of this case that would suggest that the Respondent is commonly known by the disputed domain name or has rights and legitimate interests in it.
The Respondent has failed to answer the Complaint; the Complainant has met its burden under paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
The confusing similarity between the disputed domain name and the Complainant's widely known trademark and name appears, on the facts here, to be deliberate and cannot be reconciled with good faith. The registration of the disputed domain name in May 2016 is accordingly here found to be in bad faith.
The disputed domain name was quite recently registered and has, according to the Complainant, not been actively used in connection with a website. It has long been established that the passive holding of a domain name may under certain circumstances, constitute bad faith use within the meaning of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2. The circumstances here present, notably, the clear likelihood that the disputed domain name was registered in order deliberately to cause confusion with the Complainant's widely known and commercially valuable trademark are consistent with such passive "use".
Moreover, the Complainant asserts that there has been at least one attempt to use the disputed domain name as part of an email address in an attempted "scam" related to confidential legal information. The "scam email" appended to the Complaint is laconic but does make use of the disputed domain name, and implies that there is an attorney to be contacted at that address. While the email is not definitively proven to be tied to the Respondent it does provide evidence of a specific abusive use of the disputed domain name.
For all the foregoing reasons the Panel finds that the Respondent has met its burden under 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 disputed domain name <kpmg-attorneys.com> be transferred to the Complainant.
Date: July 1, 2016