WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deloitte Touche Tohmatsu v. Whoisguard, Inc. / Nwobasi Maxwell

Case No. D2020-2311

1. The Parties

The Complainant is Deloitte Touche Tohmatsu, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States” or “U.S”).

The Respondent is Whoisguard, Inc, Panama,/ Nwobasi Maxwell, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <deloitteinvestment.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2020, 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 September 10, 2020, 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 September 11, 2020.

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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent sent an informal email on September 21, 2020, informing that the disputed domain name will be shut down. On October 14, 2020, the Center informed the Parties that it would proceed to Panel Appointment.

The Center appointed Taras Kyslyy as the sole panelist in this matter on October 21, 2020. 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.

The Respondent sent informal emails on October 22, 2020, informing the disputed domain has been shut down and further providing permission to deactivate the disputed domain name.

4. Factual Background

The Complainant is an association of firms providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names “Deloitte Touche Tohmatsu” and “Deloitte & Touche”. These names are frequently shortened to “Deloitte”. The Complainant’s member firms constitute one of the “big 4” international accountancy practices, employ about 312,000 people in over 150 countries and attained total annual revenues of USD 46.2 billion in 2019.

The Complainant is the owner of the DELOITTE trademarks across many countries (trademarks consisting of or containing DELOITTE), and possesses numerous trademark registrations, some of dating back to 1990. These include for instance the United States of America trademark registration No. 3002108, registered on September 27, 2005.

Additionally, the Complainant maintains an Internet website at the domain name <deloitte.com> where visitors may consult and use a technology platform for country specific websites around the world.

The disputed domain name was registered on June 12, 2020, and redirects to a website suggesting investments services featuring the Complainant's trademark.

The Complainant sent several cease and desist letters to the Respondent, which were never answered.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The addition of the term “investment” does not distinguish the disputed domain name from the Complainant's trademark. The disputed domain name is even more confusing due to the combination of the Complainant's trademark with the word “investment”, a term closely related to the financial services long registered and offered under Complaint’s trademark. The disputed domain name incorporates the Complainant's trademark in its entirety. The inclusion of the generic Top-Level Domain (“gTLD”) “.com” does not distinguish the disputed domain name from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trademark is a distinctive service mark with no descriptive meaning, and the disputed domain name was registered after the Complainant’s trademark had been used and registered, thus the Respondent clearly was on actual, or at a minimum constructive, notice of the Complainant’s rights before it adopted the disputed domain name. Since the Complainant’s adoption and extensive use of its trademark predates the registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interest in the disputed domain name. There is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. The Respondent cannot demonstrate how its use of the Complainant's trademark at the website associated with the disputed domain name is for a legitimate commercial purpose. The use of the disputed domain name is in connection with a website for the Respondent’s potentially fraudulent investment services demonstrating neither a bona fide offering of goods or services nor a legitimate interest.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is well known around the world. It is therefore inconceivable that the Respondent, which claims to operate in the financial services field, was unaware of the Complainant's trademark when it registered the disputed domain name. The Respondent’s use of the disputed domain name to redirect visitors to its website at which it offers potentially fraudulent investment services demonstrates that the Respondent registered the disputed domain name with a view to associating itself and/or its services with the Complainant and in the hope that it would attract Internet users to its website for commercial gain, those Internet users believing that they would be visiting a site of the Complainant. The Respondent has used the disputed domain name to take advantage of the Complainant's trademark by redirecting traffic to its own website that promotes and offers services in the financial services field, a field in which the Complainant and its member firms have offered services for years. The Respondent’s exploitation of the Complainant’s goodwill for financial gain also demonstrates the Respondent’s bad faith. The Respondent’s failure to respond to any of the communications sent by the Complainant’s representative is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In its informal emails to the Center the Respondent announced the shutdown of the website at the disputed domain name and provided permission to deactivate the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant's trademark.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of the descriptive term "investment" to the disputed domain name does not prevent a finding of confusing similarity.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has rights in its registered trademark.

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain name redirects Internet users to a website suggesting investments services featuring the Complainant's trademark to make the Internet users believe that they actually access the Complainant’s website. Past UDRP panels confirmed that such actions prove a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).

The disputed domain name incorporates the Complainant's trademark in its entirety and it is its distinctive element. Since DELOITTE is a well-known trademark, and the disputed domain name is associated with the website offering services similar to the services of the Complainant, the Panel finds that the Respondent must have been aware of the Complainant's trademark when it registered the disputed domain name, and that it chose to target the Complainant's trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).

The Respondent’s use of the confusingly similar disputed domain name on a website offering overlapping services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy. (See, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Switzerland and internationally. Thus, the Panel finds that the disputed domain name, confusingly similar to the Complainant’s trademark, was registered in bad faith.

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent's bad faith.

Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Générale des Établissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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 <deloitteinvestment.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: October 30, 2020