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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard, Inc. / Vanshita Sharma, Ms

Case No. D2020-2932

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Vanshita Sharma, Ms, India.

2. The Domain Name and Registrar

The disputed domain name <kpmgltd.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 November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 8, 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 November 12, 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 November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2020.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 9, 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.

4. Factual Background

The Complainant in this administrative proceeding is KPMG International Cooperative (hereinafter “KPMG” or the “Complainant”). The KPMG network is one of the world’s leading providers of audit, tax, and advisory services. Those services are provided by the KPMG member firms under the KPMG trademark. Member firms of the KPMG network of independent firms are affiliated with the Complainant. KPMG member firms operate in approximately 147 countries, with more than 219,000 employees. The Complainant owns the KPMG trademark and licenses its use to the KPMG member firms worldwide.

The Complainant has provided evidence of rights in the KPMG trademarks, which enjoy protection through numerous registrations.

The Complainant has registered, inter alia, the following trademarks:

- KPMG, European Union Trademark No. 001011220, registered on April 25, 2000;

- KPMG, United States of America Registration No. 2339547, registered on April 11, 2000; and,

- KPMG (figurative), European Union Trademark No. 001179662, registered on June 27, 2000;

The disputed domain name was registered on August 20, 2020 and currently resolves to a parked and inactive landing page at “www.kpmgltd.com” where an error message is displayed, stating that the requested URL could not be retrieved.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain name wholly incorporates and is confusingly similar to the Complainant’s trademark;

(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and

(c) the Respondent has registered and is using the disputed domain name in bad faith, including by impersonating at least one of the Complainant’s senior managers.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the KPMG trademarks.

The disputed domain name consists of the KPMG trademark followed by the acronym “ltd”, and of the generic Top-Level Domain (“gTLD”) “.com”. This Panel agrees with the Complainant’s assertion that these additions in the disputed domain name are irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name.

In fact, it has already been held by previous UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between a domain name and a complainant’s trademark. Indeed, the Complainant’s trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Therefore, the Panel finds the disputed domain name to be confusingly similar to the KPMG trademark in which the Complainant has rights.

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

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “kpmgltd” or by any similar name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has used the disputed domain name to send emails to third parties purporting to be from an employee of the Complainant. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The Complainant has documented that the Respondent has purposely used the disputed domain name to attempt to defraud others by impersonating an employee of the Complainant and fraudulently communicating via email regarding fake job opportunities. The Respondent has misrepresented to others that it is a senior manager at KPMG.

This Panel further notes that this same Respondent has already lost in two prior UDRP proceedings for having abusively registered two other domain names, <kp-mg.com> and <kp-mg.org>, practically identical to the Complainant’s KPMG trademark. Both cases were decided in favor of the current Complainant. See KPMG International Cooperative v. WhoisGuard, Inc. / Vanshita Sharma, Ms, WIPO Case No. D2020-0220, and KPMG International Cooperative v. Vanshita Sharma, Ms, WIPO Case No. D2020-1290.

In fact, it appears that these domain names were also used for the same kind of fraudulent email scam, i.e. to attempt to defraud others by impersonating an employee of the Complainant and fraudulently communicating via email regarding fake job opportunities.

These emails and conduct are, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and its trademarks and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name.

The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy. The fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied 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, <kpmgltd.com>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: December 22, 2020

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