WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. Rolf Bach

Case No. D2019-1808

1. The Parties

The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing, United Kingdom.

The Respondent is Rolf Bach, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <kpmg-germany.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2019. On July 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 July 30, 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 July 30, 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 July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.

The Center appointed Anna Carabelli as the sole panelist in this matter on September 2, 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 a professional services firm, providing audit, tax and advisory services. Those services are provided by KPMG member firms in more than 150 countries, with over 207,000 employees and for a combined global revenue in 2018 of USD 28.96 billion (annexes 3-6 to the Complaint). The KPMG global network operates under the trademark KPMG for which the Complainant owns several registrations (covering auditing, taxation and advisory services in classes 35 and 36), including, inter alia:

- United States of America trademark registration No. 2339547, filed on July 3, 1997, registered on April 11, 2000;

- European Union Trade Mark registration No. 1011220, filed on December 3, 1998, registered on April 25, 2000; and

- European Union Trade Mark registration No. 1179662 (for the figurative mark KPMG) filed on May 20, 1999, registered on June 27, 2000 (collectively the Mark). (Annex 7 to the Complaint)

KPMG member firms have been using the Mark for many years under license by the Complainant.

The Complainant also owns the domain name <kpmg.com> and operates an official website at “www.kpmg.com”, through which it markets, promotes and provides its services.

The disputed domain name <kpmg-germany.com> was created on July 2, 2019. The Respondent used the disputed domain name on at least one reported occasion to send a scam email in the attempt to obtain sensitive information on a purported highly confidential company acquisition relating to the Complainant’s KPMG group (annex 10 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name <kpmg-germany.com> is confusingly similar to the Mark, in which the Complainant has rights. In this connection the Complainant submits that the disputed domain name contains the distinctive element “kpmg” in its entirety, and that the combination with the country “Germany” conveys the meaning that the disputed domain name relates to KPMG’s services in Germany;

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent cannot conceivably claim to be commonly known by the Complainant’s trademark and is unable to invoke any other circumstances set out in paragraph 4(c) of the Policy. In this connection the Complainant submits that the disputed domain name resolves to a parked Registrar landing page (annex 9 to the Complaint) and has been used in an unlawful email scam (annex 10);

- The disputed domain name was registered many years after the establishment of the Complainant’s well-known Mark, which suggests that the Respondent deliberately chose to register the disputed domain name in bad faith; and

- The disputed domain name is being used in bad faith by the Respondent to generate an email address for phishing purposes.

Based on the above, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proved that it owns trademark registrations for KPMG, throughout the world. The disputed domain name contains the Complainant’s Mark in its entirety, combined with the suffix “Germany”. As recorded in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element.

Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s Mark.

The Complainant asserts that there is no credible evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name for legitimate or bona fide purposes, especially because the Respondent has used the disputed domain name for fraudulent purposes.

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1).

In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used 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, which includes:

“(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 present proceedings, given the reputation of the Complainant’s Mark – as recognized in at least fifteen previous UDRP cases dating between 2006 and 2019, it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2). The uncontested evidence¹ indicating that the Respondent has used the disputed domain name to make a fraudulent request to a third party, seeking confidential information on an acquisition involving the Complainant, demonstrates that the Respondent specifically targeted the Complainant and its Mark, and corroborates a finding of bad faith registration.

The scam as above also demonstrates bad faith use for Policy purposes, bringing this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy as quoted above. See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard, WIPO Case No.

D2017-0086; KPMG International Cooperative v. Noel Lechauve, WIPO Case No. D2019-0041. Moreover, in the present case the combination of the country “Germany” with the distinctive element KPMG conveys the meaning that the disputed domain name relates to KPMG’s services in Germany.

As noted in paragraph 6B, the Respondent has failed to submit any allegation or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by registering and using the disputed domain name confusingly similar to the Mark.

The Panel concludes in 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.

7. Decision

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-germany.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: September 9, 2019

¹ Annex 10 to the Complaint, consisting of an email from the account […]@kpmg-germany.com received on July 8, 2019, by a third party, who subsequently alerted the Complainant, in which “a […]” makes a request for “all the contact details” on the parties involved in a confidential acquisition involving the Complainant. As indicated in the Complaint, the Complainant has indeed a legitimate employee called Dr. […] whose legitimate email address is […]@kpmg-law.com.