WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Whois Privacy Services, Provided by Domain Protect LLC /Dmitriy Selivanov
Case No. D2017-0988
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 ("United Kingdom").
The Respondent is Whois Privacy Services, Provided by Domain Protect LLC of Saint Petersburg, Russian Federation / Dmitriy Selivanov of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mykpmg.com> is registered with INSTANTNAMES LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2017. On May 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2017, 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 May 23, 2017, 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 May 25, 2017.
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 May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2017.
The Center appointed Theda König Horowicz as the sole panelist in this matter on June 29, 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
The Complainant belongs to the KPMG Group which is one of the world's leading providers of audit, tax and advisory services. The KPMG Group operates in approximately 150 countries including in the Russian Federation. KPMG has been ranked consistently for many years as one of the "Big Four" professional services firms. The KPMG network has been using the trademark KPMG for the past 30 years.
The global and member firms' KPMG websites operate mainly under the flagship domain name <kpmg.com> and in the Russian Federation at the url "https://home.kpmg.com/ru/en/home.html".
The Complainant owns several trademark registrations containing KPMG throughout the world, including the International Registration No. 725890 for the figurative trademark "KPMG + logo" of October 7, 1999 which covers the international classes 9, 16, 35, 36 38, 41 and 42 and is, inter alia, designated in the Russian Federation.
The KPMG brand has been consistently ranked among the world's top brands for many years.
The disputed domain name was registered on March 4, 2009.
The disputed domain name redirects to a parking webpage on which the disputed domain name is offered for sale. It has previously resolved to a website displaying pay-per-click links referring to KPMG and its field of activity.
5. Parties' Contentions
The Complainant alleges to have substantial rights in the trademark KPMG including in the Russian Federation where the Respondent is based. The mark KPMG is inherently distinctive and non-descriptive, and it is famous throughout the world. The disputed domain name consists of the name KPMG combined with the prefix "my" which is a generic and descriptive word. The disputed domain name therefore clearly conveys the meaning that it relates to services provided by the Complainant. The disputed domain name is therefore confusingly similar to the KPMG trademark.
The Complainant states that the Respondent has no rights in the disputed domain name as
(i) there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods;
(ii) the Respondent has not been commonly known by the disputed domain name; and
(iii) the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith, because:
- the disputed domain name was registered or acquired primarily for the purpose of selling the disputed domain name to the Complainant or to a competitor of the Complainant;
- the Respondent's registration, and any use, of the disputed domain name will disrupt the business of the KPMG network by misleading members of the public into believing that the disputed domain name is connected with KPMG;
- it is likely that the Respondent obtains advertising revenue by using the disputed domain name in connection with pay-per-click links or other use, thereby intentionally attempting to attract, for commercial gain Internet users to its website or other online location by creating a likelihood of confusion with the KPMG trademark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(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 the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights for the trademark KPMG.
This trademark is reproduced in its entirety in the disputed domain name. As mentioned by the Complainant, the fact that the prefix "my" is attached to KPMG is not significant, this prefix being generic and descriptive.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's marks and that the requirement of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The burden of production on this factor therefore shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004‑0110).
The Respondent has remained silent in these proceedings.
For the reasons mentioned by the Complainant and in the absence of any justification by the Respondent, the Panel finds that it is unlikely that the disputed domain name, which reproduces in its entirety the KPMG trademark, was registered for a legitimate use.
Under the circumstances, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.
Considering the reputation of the trademark KPMG and the worldwide reputation of the KPMG Group, the Panel finds that the Respondent must have known the Complainant. Consequently it is very likely that the disputed domain name was registered with the intention to use it in order to profit from the reputation and goodwill of the Complainant and its trademarks.
The Panel finds that there is a range of circumstances in the present case which tend to show that the intention of use is of bad faith.
In particular, the mere addition of the prefix "my" with the well-known name KPMG was likely made so as to give the false impression of an existing connection between the Respondent and the Complainant.
The disputed domain name has been used to resolve to a website displaying pay-per-click links, thus potentially generating unfair revenues for the Respondent, see section 2.9 and 3.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"). Furthermore, the disputed domain name is offered for sale on the parking webpage for a minimum of USD 500.
Finally, the absence of any response by the Respondent is also an indicator of bad faith.
For the above-mentioned reasons, the Panel thus concludes that the third condition instituted by paragraph 4(a)(iii) is fulfilled as well.
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, <mykpmg.com>, be transferred to the Complainant.
Theda König Horowicz
Date: July 19, 2017