WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Manuel Vellere
Case No. D2019-2024
1. The Parties
The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Manuel Vellere, France.
2. The Domain Name and Registrar
The disputed domain name <kpmg-financials.com> (the “Disputed Domain Name”) is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 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 August 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On that same day, the Center sent an email communication to the parties in English and French indicating the language of the registration agreement is French, and inviting them to submit their comments as to the language of the proceeding. The Complainant filed an amended Complaint on August 25, 2019 and also requested English to be the language of the proceeding. The Respondent did not submit any comments.
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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.
The Center appointed Jacques de Werra as the sole panelist in this matter on September 24, 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 heads a network of companies which build together one of the world’s leading providers of audit, tax and advisory services. Those services are provided by a network of independent companies which are affiliated with the Complainant and which operate under the trademark KPMG. These companies operate in approximately 153 countries, with more than 207,000 employees.
The Complainant owns over 480 trademark registrations containing the name KPMG throughout the world. These include United States trademark registration number 2339547 and European Union trademark registration number 1011220 for the word mark KPMG, covering auditing, taxation services and advisory services in classes 35 and 36 (among other goods and services), filed on (respectively) July 3, 1997, and December 3, 1998 and registered on (respectively) April 11, 2000 and April 25, 2000 (“the Trademark”). The Complainant owns the Trademark and licenses its use to its member companies worldwide.
It appears that the Disputed Domain Name has been used on at least one occasion in an unlawful email scam. The email scam constituted an attempt to fraudulently obtain sensitive information relating to a purported corporate acquisition. On July 25, 2019, a third party who subsequently alerted the Complainant received an email from the email “[...]@mailbox-ssl.site” requesting that sensitive commercial information relating to such acquisition be sent at “[...]@kpmg‑financials.com”. One email instructed the recipient to contact “[...]@kpmg-financials.com” for all matters relating to the acquisition and in order to receive bank details for the payment of associated moneys. Another email dated July 25, 2019, with subject «Re: Bank Data» was sent from “[...]@kpmg-financials.com” to a third party asking for sensitive bank account data to be sent by return. The emails did not originate from the Complainant and constituted an attempt to deceive the recipient into believing that they would come from the Complainant. These emails included a fake email signature that reproduced in identical form the Complainant’s Trademark and the Complainant’s figurative trademark (i.e. its corporate logo).
The Disputed Domain Name was registered on 9 July 2019. It resolves to a parked Registrar landing page.
5. Parties’ Contentions
The Disputed Domain Name consists of the Trademark in its entirety, combined with the descriptive suffix “financials”. The term “KPMG” is identical to the distinctive and famous Trademark owned by the Complainant. The Trademark appears as the first element of the Disputed Domain Name and is thus the Disputed Domain Name’s dominant and principal component. The combination of the word “financials” with the name “KPMG” conveys the meaning that the Disputed Domain Name relates to the financial services offered by the Complainant, or another company connected with the Complainant. The Disputed Domain Name is therefore confusingly similar to the Trademark.
The Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is using the Disputed Domain Name and the name of the Complainant opportunistically to make targeted, fraudulent requests to obtain illicit sensitive information from at least one third party. In addition, there is no credible evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services – or no credible legitimate basis on which the Respondent could use the Disputed Domain Name for bona fide purposes. There is further no credible evidence that the Respondent has been – or no credible legitimate basis on which the Respondent could be – commonly known by the Disputed Domain Name; and there is no credible evidence that – or no credible legitimate basis on which – the Respondent is, or could be, making any legitimate noncommercial or fair use of the Disputed Domain Name, especially since the Disputed Domain Name is not actively used by the Respondent and directs to a landing page promoting the Registrar’s domain name and website services. Within the circumstances, the name of the Complainant and the Disputed Domain Name have been used for fraudulent purposes by the Respondent.
It is clear that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. In particular, based on any credible assessment of the above circumstances and facts of this case, the Disputed Domain Name was registered or acquired primarily for the purpose of using it to target, on at least one reported occasion, a third party by way of a serious, unlawful and fraudulent email scam to illicit sensitive information. By using the Disputed Domain Name and creating an email with a KPMG branded signature (including the Complainant’s Trademark and the corresponding figurative trademarks), the Respondent is intentionally attempting to opportunistically attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous Trademark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. The Respondent’s registration, fraudulent use, and any other use, of the Disputed Domain Name will disrupt the business and image of the Complainant’s network of companies by misleading members of the public into believing that the Disputed Domain Name is connected with the Complainant, and/or it will otherwise impede members of the public searching for genuine KPMG websites, due to the confusing similarity to the Complainant and to the Trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Language of the proceedings
Based on the confirmation given by the Registrar, the language of the Registration Agreement relating to the Disputed Domain Name is French. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the Registration Agreement, subject to the authority of the panel to determine otherwise.
The Panel considers in this case that the choice of English as the language of the proceedings is appropriate. One factor that can be taken into account by panels in order to choose a language for the proceedings that is not the language of the registration agreement consists in the evidence showing that the Respondent can understand the language of the complaint (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). In this case, the Disputed Domain Name contains a term in English (i.e. “financials”) which already permits to infer that the Respondent understands English. The Panel further notes that the Complainant has established (without being contradicted by the Respondent) that the Respondent has not communicated in French – which is the language of the Registration Agreement – but that another language (i.e. German) was used in email communications that have been initiated in connection with the Disputed Domain Name (by the Respondent or with the Respondent’s knowledge) so that there is no legitimate reason to consider that French should be the language of the Respondent and the language that should be used in these proceedings. On this basis, the Panel considers that it is not unfair to conduct the proceedings in English for the Respondent, also because the Respondent has not participated in the proceedings and has thus not objected that English be the language of the proceedings.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is confusingly similar to the Trademark, whereby the generic Top-Level Domain (i.e. “.com”) shall be disregarded. The Disputed Domain Name consists of the Trademark which is distinctive and of the dictionary term “financials” which is connected to the type of activities conducted by the Complainant and by the companies which operate in the Complainant’s network.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name that reflects the Trademark owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark. See WIPO Overview 3.0, section 2.5.1. The use of the Disputed Domain Name for phishing purposes in connection with the sending of a scam email (and the fact that one email message even included the Complainant’s Trademark and the Complainant’s corporate logo) cannot confer any rights or legitimate interests to the Respondent. See WIPO Overview 3.0, section 2.13.1.
The Complainant has thus established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name which has not been challenged by the Respondent (even assuming that it could be challenged) who has not participated in the proceedings.
On this basis, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademark. Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark. The addition of the term “financials” increases the risk of confusion between the Disputed Domain Name and the Trademark. The use of the Disputed Domain Name for phishing purposes confirms that the Respondent intentionally targeted the Complainant and the Complainant’s Trademark by registering and using the Disputed Domain Name, it being noted that an illegal use of the Disputed Domain Name constitutes bad faith registration and use of the Disputed Domain Name. See WIPO Overview 3.0, section 3.1.4.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
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-financials.com> be transferred to the Complainant.
Jacques de Werra
Date: September 30, 2019