WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard, Inc. / Grant Thornthon, KPMG
Case No. D2018-0255
1. The Parties
Complainant is KPMG International Cooperative of Amstelvee, Netherlands, represented by Taylor Wessing LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Grant Thornthon, KPMG of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <kpmg-firm.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 February 6, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2018, 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 Complainant on February 9, 2018 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 February 12, 2018.
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 Respondent of the Complaint, and the proceedings commenced on February 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 6, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 15, 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.
4. Factual Background
Complainant KPMG International Cooperative is a network of member firms that, collectively, is one of the world’s leading providers of audit, tax and advisory services. Member firms of the KPMG network of independent firms are affiliated with Complainant. The KPMG member firms operate in approximately 150 countries, with over 189,000 employees. The KPMG services are provided under the trademark KPMG. Complainant owns the trademark KPMG and licenses its use to the KPMG member firms worldwide. Its current form and initials, KPMG, result from the merger between Peat Marwick International (PMI) and Klynveld Main Goerdeler (KMG) in 1987. The combined global revenues of the KPMG member firms in 2016 were USD 25.42 billion.
Complainant has submitted as Annex 7 copies of its United States of America (“United States”) and European Union service / trade mark registrations for the KPMG mark, the earliest of which dates back to April 11, 2000. Complainant also owns the domain name <kpmg.com>, which was registered in October 1992 and which is used by Complainant as a forum to promote and disseminate information regarding Complainant’s various offerings under the KPMG mark.
The disputed domain name <kpmg-firm.com> was registered on January 23, 2018. The disputed domain name previously resolved to a registrar parking page displaying sponsored links. Evidence annexed to the Complaint indicates that the disputed domain name has been used in connection with a fraudulent email scheme. Currently, the disputed domain name does not resolve to an active web page.
5. Parties’ Contentions
Complainant asserts that it, directly or as licensor to its individual member firms, has continuously and exclusively used the KPMG mark in connection with audit, tax and advisory services since 1987. Complainant argues that it has established very substantial rights in the trademark KPMG, that the mark KPMG is inherently distinctive and non-descriptive, and it is famous throughout the world, and that the KPMG brand has been consistently ranked among the world’s top brands for many years. The Complainant asserts that it owns over 480 trademark registrations containing the name KPMG throughout the world. Complainant asserts that its rights in the KPMG trademark have been recognized in twelve (12) previous WIPO UDRP panel decisions.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s KPMG mark because it contains the KPMG mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term “firm” creates confusion because the term, when used with the KPMG mark, conveys the meaning that the disputed domain name relates to services offered by the internationally renowned professional services firm KPMG, or an economic undertaking otherwise connected with KPMG.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name, because Respondent is not commonly known by the disputed domain name, is not in any way affiliated with Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has used the disputed domain name on at least one occasion to pose as Complainant and to fraudulently obtain a very substantial amount of money from a third party by way of an email scam.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent has used the disputed domain name to pose as or appear affiliated with Complainant in order to perpetrate a fraudulent scheme. More specifically, according to Complainant, on January 30, 2018, the Respondent used the disputed domain name to send an email, using the email address “[…]@kpmgfirm.com”, claiming to be from KPMG Limited Portugal, to a third party, fraudulently requesting that the third party make a payment of USD 1 million by bank transfer to a designated account, as follows: “Your Chief Executive Officer Mr. Saeed Ahmed Ghobash instructed me to contact you concerning the first payment deposit of 1,000,000 dollars to Ghobash Trading Investment company bank account in Portugal, it is a matter of urgency and needs to be done as soon as possible.” Accordingly, Complainant asserts that Respondent, through the disputed domain name, is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous KPMG Mark, and that Respondent’s registration and fraudulent use of the disputed domain name will disrupt the business and image of the KPMG network by misleading members of the public into believing that the disputed domain name is connected with KPMG, and/or it will otherwise impede members of the public searching for genuine KPMG websites.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the KPMG mark, which has been registered in the United States, the European Union, and elsewhere well before Respondent registered the disputed domain name. Complainant has also submitted ample evidence that the KPMG mark is known globally in relation to audit, tax and advisory services.
With Complainant’s rights in the KPMG mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s KPMG mark as it incorporates the KPMG mark in its entirety as the first element of the disputed domain name. The addition of the descriptive term “firm” separated by a hyphen from the KPMG element does not distinguish the disputed domain name from Complainant’s KPMG mark (and in fact may reinforce the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant’s company or affiliate member firms). See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the KPMG mark and in showing that the disputed domain name is identical or confusingly similar to this trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its KPMG mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain names in connection with any product or service. Rather, Respondent has used the disputed domain name to attempt to conduct a scheme to fraudulently obtain a large sum of money from a third party ostensibly in relation to a corporate acquisition on behalf of a Portuguese affiliate of Complainant. Such fraudulent use of the disputed domain name does not, and cannot, constitute a bona fide use or legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the KPMG mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the instant proceeding, Respondent registered the disputed domain name that fully incorporates Complainant’s KPMG mark with the additional term “firm” which may create confusion by suggesting to consumers that the disputed domain name relates to Complainant and its audit, tax and advisory services provided under the KPMG mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, supra. Respondent has sent at least one email using an email address incorporating the disputed domain name which seeks to leverage the connection between the domain name and the KPMG name and mark, as well as other usages of the mark in the body of the email itself, in an attempt to defraud a third party. Accordingly, there is no doubt that Respondent was well aware of Complainant and its KPMG mark when Respondent registered the disputed domain name. And given the uncontested evidence showing that Respondent has used the disputed domain name to make fraudulent requests to third parties seeking substantial payments, it is obvious that Respondent specifically targeted Complainant and its KPMG mark, and has done so opportunistically and willfully.
The use of the disputed domain name for a scam demonstrates bad faith registration and use for Policy purposes. This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy, that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location.” See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard, WIPO Case No. D2017-0086.
Accordingly, the Panel finds that Complainant succeeds under this 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-firm.com>, be transferred to Complainant.
Brian J. Winterfeldt
Date: March 29, 2018