WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Contact Privacy Inc. Customer 1243744041 / Joonees K Chay
Case No. D2019-0231
1. The Parties
The Complainant is KPMG International Cooperative of Amstelveen, Netherlands, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1243744041 of Toronto, Canada / Joonees K Chay of West Linn, Oregon, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <kpmgl.com> is registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, 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 February 5, 2019, 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 February 8, 2019.
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 February 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2019.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on March 20, 2019. 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 KPMG International Cooperative (and its network) is one of the largest providers of audit, tax and advisory services, provided worldwide under the trademark KPMG. The Complainant is operative in 155 countries worldwide, with 174,000 employees.
The Complainant owns 480 registrations for marks formed by the name KPMG throughout the world, which are licensed to the KPMG firms worldwide. A sample proof of these registrations was attached to the Complaint as Annex 7 (e.g., European Union Trade Mark registration no. 1011220, registered on December 3, 1998).
The Complainant has established rights over the mark KPMG internationally, and its fame and renown is inevitably linked to the Complainant. Copies of the global website from the Complainant, and well as a printout of the Ranking the Brands website, showing this renown, were presented as Annexes 5 and 6.
The disputed domain name was registered on January 15, 2019. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant is the owner of registrations worldwide for the mark KPMG, which has been in use worldwide for over 30 years.
The Respondent registered the disputed domain name, which incorporates the trademark KPMG, registered by the Complainant.
As stated by the documents presented, the registration and use of the trademark KPMG predates the registration of the disputed domain name.
The disputed domain name does not direct to an active website. The disputed domain name, though, has apparently been used at least once in a fraudulent attempt to obtain payment from a client of the Complainant. The Complainant alleges that a regular email from an employee was intercepted and subsequently a different email was addressed to this client requesting a payment to be made to a different account. This new email bore the same name of the employee, but had a different termination, namely @kpmgl.com – or, the same of the disputed domain name. The suspicious proposition was informed to the Complainant, which was able to detect the fraud. A copy of this thread was attached as Annex 8 of the Complaint.
In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users by leading them to phishing scams, that it is clear that the Respondent has no rights in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <kpmgl.com> is, indeed, confusingly similar to the KPMG trademark, as the latter is entirely incorporated in the disputed domain name.
The Complainant has presented consistent evidence of ownership of the trademark KPMG in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.
The use of the trademark with the addition of the letter “l” in the disputed domain name does not differentiate it from the trademark – on the contrary, the mark KPMG is reproduced in its entirety, which may lead the public to consider the disputed domain name to lead to a site related to the Complainant. Further, the additional “l” can be also considered mistyping, a fact of which squatters normally take profit from, preparing a page that might give the user the impression it is the real one that was searched.
Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the trademark KPMG is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
The use of the disputed domain name is for intentionally misleading consumers – the attempt to deceive a client from the Complainant, trying to benefit from the disputed domain name to obtain an undue payment is a clear evidence of that.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts outlined in sections 6.A and 6.B above can evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The disputed domain name was registered to clearly mislead consumers – hence the extra “l” in the trademark. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be making use of the Complainant’s renowned trademark for unlawful purposes – concrete evidence of an attempt was presented.
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 <kpmgl.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: April 2, 2019