WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
Stichting BDO v. Bado Unila
Case No. D2018-1011
1. The Parties
The Complainant is Stichting BDO of Eindhoven, the Netherlands, represented by Hogan Lovells International LLP, the Netherlands.
The Respondent is Bado Unila of Manchester, Iowa, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bdo-thailand.com> 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 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2018, 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.
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, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2018.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 14, 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
The Complainant is an international network of financial services firms providing services in the field of accounting, taxation, consulting and advice and other professional services. It operates in 162 countries, employs around 74,000 partners and staff and operates through 1,500 offices worldwide. It claims to be the 5th largest professional services network globally. It owns registrations of the trade mark BDO and BDO logo in countries throughout the world including in Thailand and the United States (see, e.g., United States registration number 4,854,142, registered on November 17, 2015 (the “Trade Mark”).
No information is available concerning the Respondent save for the name, an address in the United States and contact details provided in the WhoIs for the disputed domain name. The record indicates that attempts by the Center to send Written Notice of the proceeding to the Respondent, in hardcopy, were each unsuccessful. The electronic transmission of the Notification of Complaint was successful.
The disputed domain name was registered on September 30, 2017. At the time of filing the Complaint, the disputed domain name resolved to a webpage prominently headed with the Complainant’s BDO logo, a picture of a location in Thailand and a number of links such as “About BDO”, “Corporate Info”, “BDO History”, “BDO Subsidiaries”, “Contact”, “Log In” and several other business-related links. At the bottom of the page, there is given the “registered address, BDO Unibank” and an address in Bangkok, Thailand. There is also a copyright notice “BDO Unibank Limited, 2017”. The “Contact” link leads to a form seeking the name and email address of the person seeking to make contact. The “log in” link calls for a user name and password and provides further live links for forgotten passwords and new registrants which call for personal information including sex, marital status and other identifying information, and a statement that BDO Unibank Limited is a licensed financial services provider and a registered credit provider.
5. Parties’ Contentions
The Complainant’s contentions may be summarised as follows:
1. The disputed domain name is substantially identical or confusingly similar to the Complainant’s Trade Marks BDO and BDO logo in which it has rights by virtue of its registrations and extensive reputation.
2. The Respondent has no rights or legitimate interests in the disputed domain name; the Respondent is not an authorised representative of the Complainant and is not affiliated with the Complainant. The Respondent’s display of the Complainant’s Trade Marks reinforces an impression of a commercial relationship which does not exist and as such use does not constitute a bona fide offering of goods or services.
3. The disputed domain name and the corresponding website fully incorporate the Complainant’s well known Trade Marks and suggest an official relationship with the Complainant. Accordingly, the Respondent has no other goal with the registration and use of the disputed domain name than to mislead the consumer and falsely create the impression that the corresponding website is affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated extensive registration rights in a trade mark comprising the letters “bdo” and a logo in which the letters “bdo” constitute the dominant particular. The disputed domain name comprises the letters “bdo” with the addition of the geographic name “Thailand” and the generic Top-Level Domain (“gTLD”) “.com”. For the purpose of the Policy, the gTLD “.com” may be disregarded. The distinctive element of the disputed domain name is the Complainant’s Trade Mark BDO. The addition of geographic name “Thailand” does not suffice to avoid the confusing similarity between the Trade Mark and the disputed domain name. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights and the first requirement of the Policy is therefore established.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not affiliated with the Complainant and is not authorised by the Complainant to use the Complainant’s Trade Mark in the disputed domain name. As discussed further below, the disputed domain name directs to a website which is constructed to give the impression that it is the website of, or affiliated with, the Complainant and which, furthermore, invites the user to provide personal and confidential information. Such use does not constitute a bona fide offering of goods or services. Such use is not a legitimate, noncommercial or fair use of the disputed domain name and there is no evidence that the Complainant has been commonly known by the disputed domain name. The Complainant has established a prima face that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not sought to rebut that case. Accordingly, the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
In the present context, the letters “bdo” have no apparent meaning other than to designate the Complainant and the Complainant’s Trade Marks. The Complainant has demonstrated a long standing and widespread use of its name and Trade Mark including in the United States. It is therefore reasonable to conclude that the Respondent registered the disputed domain name with the Complainant and its Trade Mark in mind and, as the Complainant submits, with no other goal than to falsely create the impression that the corresponding website is affiliated with the Complainant.
The disputed domain name leads to an elaborate website constructed so as to give the impression that it is the website of the Complainant or of an affiliate of the Complainant providing services in Thailand. The website prominently features the Complainant’s Trade Marks and a picture of a scene from Thailand. (In this regard, the Panel notes that the Complainant on its websites at “www.bdo.com.au” likewise depicts scenes from Australian cities at webpages linked to the Complainant’s corresponding Australian city locations.) The Respondent’s corresponding website contains active links which appear to lead to corresponding services offered at the website including a contact link which seeks to harvest personal information from the user. The Panel concludes therefore that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade Mark as to the affiliation of the website.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith and the third element of the Policy is satisfied.
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, <bdo-thailand.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: June 27, 2018