WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RSM International Association v. Domain Administrator, PrivacyGuardian.org / Hranislav Petkovic
Case No. D2017-0889
1. The Parties
Complainant is RSM International Association of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Taylor Wessing, United Kingdom.
Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America / Hranislav Petkovic of Belgrade, Serbia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <rsmrb-finance.org> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 5, 2017. In response to a notification by the Center, Complainant filed a second amended Complaint on May 10, 2017. In response to a notification by the Center, Complainant filed a third amended Complaint on May 15, 2017.
The Center verified that the Complaint together with the three amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on May 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. Respondent sent three communications to the Center on May 18, 2017, May 19, 2017, and May 22, 2017. The Center informed the Parties of the commencement of the panel appointment process on June 9, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 14, 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.
4. Factual Background
Complainant describes itself as “a network of audit, tax and consulting experts, which has been operating under the RSM brand since 1993.” Complainant asserts that it is one of the largest international accountancy networks. Complainant holds several trademark registrations for the marks RSM, RSM CLASSIC, and RSM INTERNATIONAL. One of these marks, the word mark RSM, was registered with the Europen Union Intellectual Property Office (EUIPO) on September 10, 2003 (Trademark Registration Number 002791077) in connection with “accountancy services”, “financial services”, and other services.
The Domain Name was registered on June 17, 2011. The Domain Name resolves to a website featuring the logo “RSM & RB Finance”. The site’s home pages also states: “We offer a wide range of financial services, which we tailor to fit our client’s needs perfectly. The highest quality of financial services world wide.”
5. Parties’ Contentions
Complainant argues that it has satisfied the three elements required under the Policy for a transfer of the Domain Name. According to Complainant, Respondent is “intentionally attempting to mislead RSM International’s clients as to the affiliation of source of the financial services, by creating a likelihood of confusion with the Complainant’s well-known and highly reputable RSM mark, for illegal commercial gain.”
Respondent did not submit a formal Response, and did not rebut any of Complainant’s contentions, apart from disavowing any responsibility for the use to which the Domain Name is being put. As stated in section 3 above, Respondent sent three communications to the Center on May 18, 2017, May 19, 2017, and May 22, 2017. The first two of these communications essentially asked the Center to explain what the transmittal of the Complaint meant and noted that Respondent was Serbian and did not understand English very well. The third communication stated verbatim (with the name of the individual divulged by Respondent redacted herein):
“I want to tell you that i am not the owner of that domain name or that web site. I registred it because i know how to do that and i had my network bank cart in that time. For everything else the responsible person is […] who is the owner of this domain and the web site. Could you tell me what wrong i did to and if i could to correct that mistake. Thank you.”
No formal Response was filed, and no further communication was received from Respondent or the individual mentioned in his communication.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark RSM, through registration and use demonstrated in the record. The Panel further concludes that the Domain Name is confusingly similar to the RSM mark. The Domain Name incorporates Complainant’s mark in its entirety and appends the letters “rb” and the word “finance”. In view of the services offered by Complainant under its RSM mark, the term “finance” does not reduce the confusing similarity between the mark and the Domain Name. Further, the addition of the letters “rb” does not sufficiently distinguish the Domain Name from the RSM mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (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; or
(iii) you [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to assert any rights or legitimate interests. On the contrary, Respondent disavows any responsibility for the Domain Name, asserting that he registered it for another individual, evidently because the latter was not adept at registering domain names. If this individual actually exists, he has not been heard from in this case, and therefore the Panel must conclude that Respondent speaks for this individual. On this record, the Panel cannot conclude that Respondent has any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the Domain Name was registered and is being used in bad faith. Respondent, speaking for himself or for his putative principal, does not dispute Complainant’s allegation that the Domain Name’s registration and use constitutes an “intentional attempt” to “mislead RSM International’s clients as to the affiliation of source of the financial services, by creating a likelihood of confusion with the Complainant’s well-known and highly reputable RSM mark, for illegal commercial gain.” The Panel finds that Respondent’s conduct falls within the language of paragraph 4(b)(iv) of the Policy.
Complainant has established Policy, paragraph 4(a)(iii).
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 <rsmrb-finance.org> be transferred to Complainant.
Robert A. Badgley
Date: June 20, 2017