WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grant Thornton LLP and Grant Thornton International Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Stavros Fattas
Case No. D2019-0298
1. The Parties
Complainants are Grant Thornton LLP of Chicago, Illinois, United States of America (“United States” or “U.S.”) and Grant Thornton International Limited of London, United Kingdom (collectively referred to as “Complainant”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Stavros Fattas of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <grantthornton.academy> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 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 Complainant on February 13, 2019 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 13, 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2019.
The Center appointed Leon Trakman as the sole panelist in this matter on March 25, 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. On April 3, 2019, Respondent sent an email submitting a signed standard settlement form and requesting that his personal details would not be published online. The Panel notes however that the Parties did not reach a settlement in this matter.
4. Factual Background
Complainant Grant Thornton International Limited (“GTIL”) is the coordinating entity a network of independent assurance, tax and advisory firms, made up of 53,000 people in over 130 countries. Its member firms had combined revenues in 2018 of more than USD 5 billion. Grant Thornton LLP is the U.S. member firm of GTIL and is one of the largest accounting firms in the U.S., in 2018, it reported revenues of USD 1.95 billion and employed approximately 6,600 employees.
Founded in the U.S. in 1924 as Alexander Grant & Co., Grant Thornton expanded in the U.S. and then internationally, under the coordinating entity GTIL. GTIL enjoys a robust Internet presence through its primary website “www.grantthornton.global”. Grant Thornton LLP maintains a strong presence through its website “www.grantthornton.com”.
Complainant is the owner of GRANT THORNTON trademark registrations. The U.S. registration is US/USPTO, 2242716, registered on May 4, 1999. The European Union registration is EU/EUIPO 006590962, registered on January 14, 2009. The Canada registration is CA/CIPO, TMA792583, registered on March 10, 2011.
Respondent registered the disputed domain name on November 8, 2018, which is significantly after Complainant filed for registration of its Grant Thornton trademark with the USPTO, the EUIPO and CIPO, and also significantly after Complainant’s first commercial use of its trademark in 1986.
The disputed domain name redirects to the website “www.enospire.com”.
5. Parties’ Contentions
First, Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademarks that are widely known internationally. Complainant cites in support, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
Second, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark; and that “In the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.” Complainant cites in support of these contentions, Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.
Third, Complainant contends that Respondent registered and used the disputed domain name in bad faith. It alleges, inter alia, that Respondent knew of Complainant’s trademark in registering the disputed domain name. It used that name to disrupt Complainant’s business and to redirect business to alternative websites and to promote the products and services of Complainant’s competitors. Complainant alleges further, that Respondent ignored Complainant’s requests to desist from such actions. Complainant cites in support of these contentions, inter alia, Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Andrey Ternovskiy dba Chatroulette v. Milen Radumilo, WIPO Case No. D2016-1926.
Respondent did not reply to Complainant’s contentions apart from its email from April 3, 2019, regarding an eventual settlement.
6. Discussion and Findings
6.1. Preliminary Matter: Common Cause
As a preliminary matter, Complainant has requested that the Panel accept a filing by multiple Complainants, through the consolidated action of Grant Thornton LLP, the U.S. member firm of Grant Thornton International Limited. Complainant asserts that, if multiple complainants have a common cause of action against a single respondent, they can file a single complaint under the Policy. Complainant cites, in support of this claim based on common cause, N.M Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan, WIPO Case No. D2016-2508; Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado, WIPO Case No. D2010-0170; Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods, WIPO Case No. D2016-0256. In consideration of these claims and UDRP decisions supporting such claims, this Panel determines that a claim brought in common cause is legitimate and is permitted in this case. It is clear that the a consolidated action is in common cause, and that so holding would ensure, not only that the result is equitable, given the fact that Complainants are all members of Grant Thornton International Limited. That determination is also procedurally efficient, given the number of prospective Complainants who would otherwise have to bring claims against Respondent on comparable, if not identical, grounds.
6.2. Substantive Matters
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is identical to Complainant’s GRANT THORNTON trademark and service mark registrations.
The applicable Top-Level Domain (“TLD”) is viewed as a standard registration requirement and as such is disregarded under the first element, confusing similarity test (WIPO Overview 3.0, section 1.11). In this case, since Complainant’s trademark is clearly recognizable within the disputed domain name, the Panel considers that the practice of disregarding the TLD in determining identity or confusing similarity is applicable and that the first element has been met, according to paragraph 4(a)(i) of the Policy.
Accordingly, the Panel determines that the disputed domain name is identical to Complainant’s GRANT THORNTON trademark.
B. Rights or Legitimate Interests
Complainant clearly has rights in the trademark GRANT THORNTON as is evidenced by its registered trademarks affirming ownership of, and an exclusive right to use, that trademark in the sale of goods and/or provision of services specified in and arising from its registration of those trademarks.
Respondent does not have any rights to or legitimate interests in the disputed domain name. Respondent is not commonly known by that name. Nor has Respondent acquired any rights to or legitimate interests in it in accordance with Policy, paragraph 4(c)(ii). Nor, indeed, has Complainant expressly or impliedly licensed, authorized, or otherwise permitted Respondent to register any domain names that incorporate Complainant’s trademark, in whole or in part. For comparable determinations reached by domain name panels, see Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049; Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855; Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642.
The Panel further notes that Respondent did not make any substantive submissions or present evidence of any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel determines that Respondent is neither using the disputed domain name to provide a bona fide offering of goods or services as permitted under Policy, paragraph 4(c)(i). Nor is Respondent engaged in legitimate noncommercial or fair use of that name allowed under Policy, paragraph 4(c)(iii). The evidence adduced demonstrates rather, that Respondent likely registered the disputed domain name in bad faith, and more assuredly, used the disputed domain name in bad faith. It did so to confuse Internet users as to the source of the disputed domain name, the ownership of the products and services with which it intended Internet users to identify, and the legitimacy of its right to use that name as the owner or authorized agent of the owner of those products and services. In combination, Respondent’s registration and use of the disputed domain name was intended to redirect Internet users away from Complainant, and primarily to the website of Complainant’s competitor. The intention was to disrupt Complainant’s business in bad faith, contrary to Policy, paragraph 4(b)(iii) and determinations of previous UDRP panels. See, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Andrey Ternovskiy dba Chatroulette v. Milen Radumilo, WIPO Case No. D2016-1926.
As evidence of Respondent’s bad faith registration of the disputed domain name, it is reasonable to conclude that Respondent was aware of Complainant’s trademarks, given that they are internationally recognized. It is even more reasonable to assume that, in registering and also using a confusingly similar domain name to Complainant’s various trademarks, that Respondent was aware of Complainant’s global reputation and commercial activities. On comparable determinations of bad faith registration, see Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230.
Given the highest probability that Respondent had knowledge of, and familiarity, with Complainant’s brand and commercial enterprise, Respondent’s use of the disputed domain name confirms the transition of such bad faith registration to its bad faith use. It is clear that Respondent used the disputed domain name to deliberately redirect Internet users to a website offering a competitor’s goods and services, a practice for which there is no other “plausible” explanation. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226. In using the disputed domain name to redirect Internet traffic to the website of a competitor of Complainant, it “defies common sense” to consider such use as being “coincidental”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Beyond these clearly indicative affirmations of bad faith use is further peripheral but also material evidence that further demonstrates bad faith use. Indeed, Respondent employed a privacy service to hide its identity. As past UDRP panels have determined, such action may create evidence of bad faith use in the absence of convincing countervailing reasons. See, for example, Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230; WIPO Overview 3.0 at section 3.6.
Typical, too, of bad faith use, Respondent ignored Complainant’s cease-and-desist letter, continuing its alleged bad faith practices in disregard of the demand made of it to desist. See Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330; RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242.
As a result, the Panel concludes that Respondent engaged in neither a bona fide offering of goods or services nor in a legitimate, noncommercial fair use of the disputed domain name. Instead, Respondent used that name in incontrovertible bad faith, if not from inception with its registration, then through its subsequent ongoing and exacerbating use of it in bad faith. (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] website using a domain name which is confusingly similar to Complainant’s mark and for the same business”. See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374. It would be unconscionable to hold otherwise in light of the overwhelming evidence of Respondent’s bad faith 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 <grantthornton.academy> be transferred to Complainant.
Date: April 9, 2019