WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Adebissi Djogan
Case No. D2017-2447
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 Adebissi Djogan of Paris, France, represented by Pan Associés, France.
2. The Domain Name and Registrar
The disputed domain name <deloitte.africa> (the “Domain Name”) is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and stating that the language of the registration agreement is French.
On December 15, 2017, the Center transmitted an email to the parties in English and French regarding the language of the proceedings. On December 15, 2017, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not object to the Complainant’s request.
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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2018.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on February 1, 2018. 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.
On February 21, 2018, the Panel sent the Procedural Order No. 1 to the Parties, noting that, presumably due to an administrative oversight, the Center’s Notification email sent to the Parties was incomplete, and ordering the Center to re-notify the Complaint to the Parties, granting the Respondent a five day period to indicate whether it wished to participate in the proceedings. The Panel noted the Respondent’s communication of February 23, 2018, in which it requested an extension to file a Response. The Panel, with order dated February 23, 2018, invited the Respondent to submit a Response by March 3, 2018. The Respondent filed the response on March 2, 2018. On March 5, 2018 the Complainant filed a Supplemental Filing in support of its Complaint to reply to certain new arguments and statements contained in the Response submitted by the counsel for the Respondent on March 2, 2018.
4. Factual Background
The Complainant is the owner of several registrations related to trademark DELOITTE alone or in combination with other words all over the world since 1989 and also owns numerous domain names. The trademark has been used for many years in the United States of America and elsewhere around the world, including numerous countries in Africa, by the Complainant and its affiliate companies, which employ approximately 264,000 people in over 150 countries. In fiscal year 2017, the Complainant and its affiliate companies attained aggregate revenues of over USD 38 billion.
The Complainant owns registrations for the DELOITTE marks in several African countries and in the African Intellectual Property Organization (“AIPO” or “OAPI”) in connection with a variety of goods and services, including the core business management consultation, finance advisory and accountancy services.
The Complainant’s affiliate companies operate in 53 countries in Africa, using the DELOITTE mark extensively on the continent. In particular, they maintain dedicated websites in the local language for Algeria, Angola, Benin, Cameroon, Congo, Côte d’Ivoire, Democratic Republic of the Congo, Egypt, Equatorial Guinea, Ethiopia, Gabon, Ghana, Kenya, Libya, Morocco, Namibia, Nigeria, Senegal, South Africa, Togo, Tunisia and the United Republic of Tanzania.
The Respondent registered the Domain Name <deloitte.africa> on August 1, 2017, which does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends the following:
a) the Domain Name is confusingly similar to the trademark of the Complainant because:
- the Complainant is the owner of valid IP rights on the expression “Deloitte” in several countries and has renewed the registrations also in several countries in Africa continent;
- it reproduces the Complainant’s trademark in its entirety;
- the presence of the generic Top Level Domain (“gTLD”) “.africa” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element; moreover the addition of a geographical indicator to the Complainant’s world renowned DELOITTE trademark adds to rather than diminishes the likelihood of confusion because the addition of a place name to a trademark is a common method for indicating the location of a business enterprise identified by the trademark or service mark.
b) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
- it is proved that the registration of the contested Domain Name occurred after the Complainant’s DELOITTE marks had been used extensively in numerous jurisdictions including in Africa, and after the Complainant had secured registrations for DELOITTE marks in jurisdictions around the world including in Africa. As a consequence, it is predictable that the Respondent clearly was on actual, or at a minimum constructive, notice of the Complainant’s rights before he adopted the Domain Name incorporating the Complainant’s DELOITTE mark;
- the Respondent is not a licensee of the Complainant, nor has been otherwise authorised or allowed by the Complainant to make any use of its DELOITTE trademark, in a domain name or otherwise;
- the Respondent does not appear to have used the contested Domain Name for any legitimate purpose. The only website at the “www.deloitte.africa” URL is a holding page provided by the Registrar. The Domain Name does not appear to have been configured for use with any email servers and the only servers associated with the Domain Name incorporate the term “spam,” suggesting that the Respondent intends to use the Domain Name to send unauthorized and unsolicited spam email messages.
c) The Domain Name was registered and is being used in bad faith because:
- the only reason why the Respondent has chosen to register the Domain Name was seeking to create an association with the Complainant and thereby profit from the sale of the same which incorporates the Complainant’s registered, distinctive and world-famous DELOITTE mark in its entirety;
- the only reason for the Respondent to register the Domain Name is to intentionally confuse consumers, to trade on the Complainant’s rights and reputation, and to usurp the Complainant’s goodwill to drive traffic to its website all for its own commercial benefit;
- the Domain Name is not currently associated with an active website (i.e., a non-parking site) and the Respondent, through his attorney-at-law, asked money to transfer its ownership in reply to the cease-and-desist letter sent by the Complainant to the Respondent.
The Respondent states that the “.africa” gTLD was created in July 2017 to make a reference to the African continent, as is the case of the European continent with “.eu” gTLD. It refers to a specific geographical indication: Africa.
It points out that DELOITTE is not a well-known mark according to international law especially in Africa and, in his opinion; the Complainant has failed to provide evidence of maintaining its rights upon DELOITTE marks. According to the Respondent, almost all the registered trademarks in Africa expired in 2014-2015, with no proof of renewal in the annexes. As indicated in the OAPI Filer’s Guide, in the absence of a renewal of the registration of the mark, which must take place in the tenth year of registration, and after the expiry of a waiting period of 12 months, the brand enters the public domain. Consequently, in the absence of evidence of the renewal of the registration of the DELOITTE mark in the 17 member countries of OAPI, this mark is no longer protected.
As a result, the Respondent claims that the Complainant cannot validly allege that he has protection in 53 African countries. Only about ten countries enjoy this protection, which is not enough to appropriate rights and notoriety in a continent that has 55 countries.
In addition, the Respondent alleges that it is necessary to bear in mind that registration of a domain name is free, if it does not infringe prior rights, and gives an exclusive right of use to its owner.
The Respondent wished to develop activities with the Domain Name totally unrelated to the Complainant’s field of activity. He has multiple activities in Africa, especially in sub-Saharan countries.
About the lack of having developed a website or email address, the Respondent stated that he did not want to develop his communication tools from the moment he received the Complainant’s opposition. The Respondent does not have sufficient financial resources to change communication tools if he can no longer keep the Domain Name. It therefore prefers to suspend its activities pending the amicable settlement of this dispute.
The Respondent declared that he does not intend to make inappropriate or unlawful use of the contested Domain Name and states that it was not registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The request made by the Respondent’s counsel in reply to the cease-and-desist letter sent by the Complainant to offer to sell the domain name without giving any amount of money has only the intention to open a door for a negotiation to avoid litigation (see Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble, WIPO Case No. D2009-0989).
Moreover, the Complainant and the Respondent are not competitors and the Domain Name was not registered by the Respondent primarily to disrupt the Complainant’s business as he has not started any exploitation. The Respondent has no primarily intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11(a) of the Rules, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of proceedings to be English on the grounds that the Domain Name is in English, that prior communication with the Respondent’s attorney-at-law were conducted in English, and that requesting a translation would represent an undue burden on the Complainant.
The Respondent did not reply to the Complainant’s request.
For these reasons, the Panel determines that the language of the proceedings is English.
B. Procedural issues
The Complainant, without being asked by the Panel, has filed a reply to the response of the Respondent.
There are different interpretations by previous UDRP panels about the acceptance or not of unsolicited briefs.
Some UDRP panels consider unsolicited reply briefs inappropriate and contrary to both the Rules and the spirit of the Policy because paragraph 12 of the Rules provides that only the panel may request further submissions: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. (See Plaza Operating Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166).
Other panels accept the unsolicited briefs.
This Panel does not interpret paragraph 12 of the Rules as precluding acceptance of additional uninvited submissions bearing in mind that it has to be given to each party a fair opportunity to present its case. If a respondent raises matter which the complainant could not have been expected to have addressed in its Complaint, admission of an uninvited reply may be warranted in the interests of fairness.
Therefore, this Panel considers appropriate to evaluate the circumstances of each case before deciding whether to admit unsolicited additional submissions.
In this case, the Panel accepts the Complainant’s unsolicited brief which is related to just confirm, with the filing of appropriate document, a fact element: the renewal of the trademarks owned by the Complainant in Africa, renewal which has been contested by the Respondent.
C. Identical or Confusingly Similar
The Complainant has trademark registrations for DELOITTE in various jurisdictions and in particular in Africa where it is also present through company affiliates. It has been proven that the Complainant has rights in the DELOITTE trademark which have been correctly renewed.
The Domain Name <deloitte.africa> incorporates the Complainant’s trademark in its entirety.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark.
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD – in this case “.africa” – because it is a necessary component of the Domain Name and does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
D. Rights or Legitimate Interests
The Respondent simply declared that the Complainant should not have valid IP rights in Africa because his trademarks have not been renewed and he should wish to develop activities with the Domain Name totally unrelated to the Complainant’s field of activity.
About the first argument, the Panel has ascertained that the Complainant is the owner of several trademarks including in Africa duly renewed and, on the contrary, the Respondent lacked to give and file any documents to prove any rights in the Domain Name. He limited only to declare that he wanted to develop an unrelated business to the one of the Complainant without giving any indication on the type of the business and without filing any documents to demonstrate such circumstance.
He simply declared that “he should wish to develop activities with the deloitte.africa domain name totally unrelated to the Complainant’s field of activity” without giving any idea of the business he would like to develop under the Domain Name.
Moreover, the circumstance that after having received the cease-and-desist letter the attorney at law of the Respondent informed that his client was available to transfer the Domain Name for an indefinite amount of money without giving any explanation or valid argument for having registered the Domain Name proves, without any doubt, the real lack of interest in the contested registration.
It is evident that the Respondent has not received any license or authorization from the Complainant to use the well-known trademark owned by the Complainant, nor he has they been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
E. Registered and Used in Bad Faith
The Respondent has not filed any documents in his response to justify his real interest in the Domain Name. It is undoubted that a simple declaration of interest in a domain name without giving any explanation of the reasoning for having chosen the Domain Name and without filing any documents to give an idea of a real interest in the same, cannot justify a registration and use in good faith in these circumstances.
It is the Panel’s opinion that at the moment of the registration of the Domain Name, the Respondent must have been aware of the existence of the DELOITTE mark which is not a common word. It is quite predictable that only someone who was familiar with the Complainant’s mark would have registered a domain name including such mark.
The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the Complainant’s trademark by choosing a domain name that is confusingly similar to the Complainant’s mark. This circumstance is confirmed not only by the fact that he has not explained which type of business he wanted to develop under the Domain Name but also he has not given any explanation in having chosen such Domain Name.
Taken together with the fact that the attorney at law answered to the cease-and-desist letter sent by the Complainant informing that his client would be available to sell the contested Domain Name without indicating a price, the Panel believes that the Complainant has demonstrated that the Domain Name has been registered and is being 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 Domain Name, <deloitte.africa> be transferred to the Complainant.
Date: March 15, 2018