WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard Inc. / Gary Biskol
Case No. D2017-1952
1. The Parties
The Complainant is KPMG International Cooperative of Amstelveen, Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is WhoisGuard Protected, WhoisGuard Inc., of Panama City, Panama / Gary Biskol of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <kpmg-accounting.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2017. On October 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 October 10, 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 amendment to the Complaint on October 13, 2017.
The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2017.
The Center appointed Richard Hill as the sole panelist in this matter on November 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 owns rights in the mark KPMG dating back to at least 1997, pursuant to United States Trademark Registration Number 2339547 and European Union Trade Mark Registration Number 001011220 for the word mark KPMG, covering auditing, taxation services, and advisory services in classes 35 and 36 (among other goods and services), filed on (respectively) July 3, 1997 and December 3, 1998.
The disputed domain name was registered on August 1, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent used the disputed domain name for a fraudulent email scam.
5. Parties’ Contentions
Complainant states that it is one of the world’s leading providers of audit, tax, and advisory services. Those services are provided by its member firms under the trade mark KPMG. The member firms operate in approximately 150 countries, with over 189,000 employees. Complainant owns the trade mark KPMG and licenses its use to the member firms worldwide. Complainant has been ranked consistently for many years as one of the “Big Four” professional services firms. Its combined global revenues in 2016 were USD 25.42 billion. Complainant owns over 480 trademark registrations containing the name KPMG throughout the world. These include US trademark registration number 2339547 and European Union Trade Mark Registration Number 001011220 for the word mark KPMG, covering auditing, taxation services, and advisory services in classes 35 and 36 (among other goods and services), filed on (respectively) July 3, 1997 and December 3, 1998.
According to Complainant, the disputed domain name is confusingly similar to its mark because it consists of the mark KPMG combined with the descriptive suffix “accounting”.
Complainant alleges that it has not licensed or otherwise authorized Respondent to use its mark, and that Respondent is not commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, Respondent has used the disputed domain name in an unlawful attempt to fraudulently obtain a very substantial amount of money from a third party, by way of an email scam. More specifically, on August 21, 2017, Respondent used the disputed domain name to send an email – using the email address email@example.com – to a third party fraudulently requesting that third party to transfer the sum of EUR 982,765 to a bank account in the name of Homore Enterprise (HK) Limited. The third party reported this fraudulent email to Complainant, on the basis that the email falsely purported to be sent from Complainant. And indeed the email was not sent by Complainant or any of its employees.
Further, says Complainant, the disputed domain name was registered and is being used in bad faith for fraudulent email scams. Thus, by using the disputed domain name, respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Respondent’s registration, fraudulent use, and any other use, of the disputed domain name will disrupt the business and image of Complainant by misleading members of the public into believing that the disputed domain name is connected with Complainant, and/or it will otherwise impede members of the public searching for Complainant’s genuine websites
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109.
A. Identical or Confusingly Similar
The disputed domain name <kmpg-accounting.com> consists of Complainant’s mark KPMG, together with the descriptive term “accounting”, which refers to Complainant’s business activities. This is sufficient to find confusing similarity in the sense of the Policy. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075; see also M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; see also ERGO Versicherungsgruppe AG v. Idealist, WIPO Case No. D2008-0377 (the combination of the trademark ERGO in the second level of a domain name together with a generic term “finance” made the disputed domain name confusingly similar to the trademark in question).
The Panel holds that Complainant has satisfied its burden of proof for the first element of the Policy.
B. Rights or Legitimate Interests
Respondent does not have any license or other authorization to use Complainant’s mark or to sell its products or services. Respondent is not commonly known by the disputed domain name.
Respondent used the disputed domain name in an unlawful attempt fraudulently to obtain a substantial amount of money from a third party, by way of an email scam. Specifically, Respondent used the disputed domain name to send an email that purported to come from Complainant to a third party fraudulently requesting that third party transfer a significant sum of money to a specified bank account. The email in question did not come from Complainant or any of its employees. This is not a bona fide or legitimate use of the disputed name.
Legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s rights, or when the domain name is used in bad faith to divert users through confusion, see the discussion below and see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
The Panel holds that Complainant has satisfied its burden of proof for the second element of the Policy.
C. Registered and Used in Bad Faith
Respondent has not presented any plausible explanation for its use of Complainant’s trademark in the disputed domain name. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent used the disputed domain name in an unlawful attempt fraudulently to obtain a substantial amount of money from a third party, by way of an email scam. This constitutes evidence of bad faith registration and use. See Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; see also Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117; see also Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679.
The Panel holds that Complainant has satisfied its burden of proof for the third element 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-accounting.com> be transferred to the Complainant.
Date: November 15, 2017