WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Mickael Renaud
Case No. D2019-0246
1. The Parties
The Complainant is KPMG International Cooperative, of Amstelveen, Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Mickael Renaud, of Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name <kpmg-act.com> is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 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 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 8, 2019, the Center sent an email communication in English and French to the Parties, informing them the language of the registration agreement is French and inviting the Parties to submit their preferences regarding the language of the proceeding. The Complainant submitted its request on February 8, 2019, that English be the language of the proceeding. The Respondent did not submit any comment. On February 11, 2019, the Complainant filed an amended Complaint.
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 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2019.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 18, 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
KPMG is one of the “Big Four” professional services firms, providing audit, tax and advisory services, and had in 2016 combined global revenues of USD 25.42 billion. The KPMG global network of professional services firms operates in more than 150 countries, with over 189,000 employees. The Complainant owns the KPMG trademark and licenses its use to the KPMG member firms, which have used it for the past 30 years.
The KPMG trademark has been registered around the world by the Complainant. The registrations include, inter alia, a United States Trademark number 2339547, filed on July 3, 1997 and registered on April 11, 2000, and a European Union Trademark number 001011220, filed on December 3, 1998 and registered on April 25, 2000, all for the word KPMG (together, the “Mark”).
The Complainant is also the registrant of many domain names containing the Mark. Its main domain name, <kpmg.com> resolves to the Complainant’s official website.
The disputed domain name <kpmg-act.com> was created on December 25, 2018 and redirects to the official website of the Complainant. The Respondent used the dispute domain name to create an email address in the form “[…]@kpmg-act.com” from which a fraudulent email was sent to a client of the Complainant.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <kpmg-act.com>, contains the distinctive element “kpmg” in its entirety. The Complainant also asserts that the English word “act” preceded by a hyphen and following the distinctive element “kpmg” conveys the meaning that the disputed domain name relates to the activities of the KPMG global network of professional firms.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent is not affiliated with the Complainant and that it never authorized the Respondent to use the Mark in any manner. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being famous, the Respondent had knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that by passively holding the disputed domain name and using it to generate an email address for phishing purposes, the Respondent is using it in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[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 Registrar confirmed that the language of the Registration Agreement of the disputed domain name is French.
The Complainant in its Complaint and in an e-mail of February 8, 2019 argued that it would be disproportionate and unfair to put the Complainant to the time and cost of translating and submitting the Complaint in French and formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or to object.
In the light of the above circumstances, particularly the fact that the disputed domain name has been used in connection with a website and a fraudulent email in English, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and French, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
B. Failure to respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.1 Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <kpmg-act.com>, it is evident that the latter consists solely of the Mark, followed by a hyphen and the English word “act”, itself followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is also well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <kpmg-act.com> is confusingly similar to the Mark, which is incorporated in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business.
The website associated with the disputed domain name currently resolves to an inactive page, but in the past used to resolve to the Complainant’s website, which cannot provide any rights or legitimate interests for purposes of the Policy. See, e.g., PPG Industries Ohio, Inc. v. Name Redacted, WIPO Case No. D2018-0334.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) is not affiliated with the Complainant and (ii) has not been authorized by the Complainant to register or use the disputed domain name or the Mark.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be, depending on the circumstances, evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Second, it is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Mark is famous, as was recognized in at least thirteen previous UDRP cases dating between 2006 and 2018, the Panel finds that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028); and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Furthermore, the Panel notes that the Complainant has also argued and provided evidence that the disputed domain name has been fraudulently used to generate an email address in order to elicit sensitive financial information from unsuspecting members of the public. This e-mail scam, known as phishing, is particularly deceptive, as the Respondent used the disputed domain name in an e-mail from a fake employee posing as a legal advisor of the Complainant.
The Panel also finds that using the disputed domain name to resolve to the official website of the Complainant, and luring the public into believing the disputed domain name is associated with the Complainant and is legitimate, is further evidence of bad faith registration and use.
Moreover, the Panel notes that the Respondent used a privacy shield service and under the present circumstances considers this fact as corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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-act.com> be transferred to the Complainant.
Date: April 8, 2019