WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. George Kyres
Case No. D2021-4284
1. The Parties
The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is George Kyres, Canada.
2. The Domain Name and Registrar
The disputed domain name <kpmg-business.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2021, 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 January 6, 2022, 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 January 7, 2022.
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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.
The Center appointed Fabrice Bircker as the sole panelist in this matter on February 18, 2022. 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 is a Swiss company headquartered in the Netherlands. It operates a leading network of companies providing notably audit, tax and advisory services, present in approximately 147 countries and totting up more than 219,000 employees.
In 2018, the global revenues of the Complainant were close to USD 30 billion.
The Complainant’s activities are rendered for over 30 years under the KPMG brand which is protected worldwide through many trademark registrations, such as:
- European Union Trade Mark registration No. 001011220 for KPMG in classes 9, 16, 35, 36, 41, and 42, filed on December 3, 1998, registered on April 25, 2000, and regularly renewed since then;
- United States of America trademark registration No. 2339547 for KPMG in classes 9, 16, 35, 36, 41, and 42, with first use in April 1987, filed on July 3, 1987, registered on April 11, 2000, and regularly renewed since then.
The disputed domain name was registered on September 14, 2021.
It does not resolve to any active website.
However, according to the record of the case, the disputed domain name was used to send at least two
- by which the sender asked to the recipients to contact him as soon as possible in the context of alleged matters, notably of acquisition,
- sent under the alleged identity of a genuine partner at the Complainant in Canada, and
- bearing in signature the Complaint’s logo and the address of its Montreal office.
According to the Complainant, the latter is not at the origin of these emails.
5. Parties’ Contentions
Identical or Confusingly Similar
First, the Complainant presents its business and its rights notably in the KPMG trademark registrations.
Then, the Complainant contends that the disputed domain name is confusingly similar to its KPMG trademark, notably because it fully reproduces it by merely adding the descriptive word “business” which conveys the meaning that the disputed domain name relates to the business services offered under its network of companies.
Rights or Legitimate Interests
The Complainant claims that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
In this respect, the Complainant notably argues that the disputed domain name was registered many years after the establishment of its well-known KPMG mark.
The Complainant also contends that the disputed domain name does not resolve to an active website and has been used to send fraudulent e-mails by which the sender falsely pretended to be a partner at the Complainant.
In these circumstances, the Complainant suspects that the disputed domain name may have been registered and used in a fraudulent attempt to defraud third parties into transferring funds or confidential information for the benefit of the Respondent.
As a consequence, the Complainant contends that there is no credible evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
In addition, the Complainant puts forward that there is no credible evidence that the Respondent may be commonly known by the disputed domain name, and that he may be making any legitimate non-commercial use of said disputed domain name.
Registered and Used in Bad Faith
The Complainant claims that the disputed domain name was registered primarily for the purpose of using it to target a third party by way of a serious, unlawful, and fraudulent email scam to elicit the third party into transferring funds.
The Complainant adds that by using the disputed domain name and sending fraudulent emails impersonating one of its employees, the Respondent is intentionally attempting to opportunistically attract, for commercial gain, internet users by creating a likelihood of confusion with the Complainant’s famous KPMG mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Besides, the Complainant contends that the Respondent’s registration and fraudulent use of the disputed domain name: i) will disrupt its business and image by misleading the public into believing that said disputed domain name is connected with KPMG, ii) and/or will otherwise impede members of the public searching for genuine KPMG websites, due to the confusing similarity to the Complainant and its trademark registrations for KPMG.
Finally, and for all these reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:
(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.
Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Taking the foregoing provisions into consideration the Panel finds as follows.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
It results from the documents supporting the Complaint, and in particular from Annex 7, that the Complainant is the owner of trademark registrations for KPMG, notably those detailed in section 4 above.
Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark (…), the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
This test is satisfied here, as the disputed domain name, <kpmg-business.com>, identically reproduces the KPMG trademark, and because the added element, namely “business”, does not prevent the Complainant’s trademark from remaining recognizable. Indeed, there is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview 3.0, section 1.8; Kabbage, Inc. v. Name Redacted, WIPO Case No. D2020-0140). Besides, the generic Top-Level-Domain “.com” may be ignored for the purpose of assessing the confusing similarity, because it only plays a technical function.
Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (WIPO Overview 3.0, section 2.1; or for instance Applied Materials, Inc. v. John Warren, WIPO Case No. D2020-0950).
In addition, given the record of the case, the Respondent is not commonly known by the disputed domain name.
Besides, the disputed domain name was used to send emails by which the Respondent has deceitfully impersonated a partner of the Complainant’s Montreal office to contact third parties, notably in the context of an alleged acquisition matter.
Obviously, such fraudulent use of the disputed domain name, which is not refuted by the Respondent, does not amount to a legitimate noncommercial or fair use of the disputed domain name. In this respect, panels have categorically held that the use of a domain name for illegal activity (such as phishing or impersonation) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13; or Colas, Société Anonyme v. Concept Bale, WIPO Case No. D2020-2733).
Taken all the above into consideration, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has had an opportunity to rebut the Complainant’s contentions but has not done so.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly that the second element in paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must establish that a respondent registered and is using the disputed domain name in bad faith.
The circumstances deemed to be evidence of the registration and use of a domain name in bad faith listed at paragraph 4(b) of the Policy are non-exhaustive examples.
1) Registration in Bad Faith
In the present case, the Panel finds that:
- the use of the KPMG trademark by the Complainant predates by decades the registration of the disputed domain name,
- the Complainant’s KPMG trademark is intrinsically distinctive and also enjoys substantial reputation and goodwill (for instance, it is ranked among the world’s top brands for many years and many UDRP panels have already recognized its reputation ant its well-known feature, see notably KPMG International Cooperative v. Privacy service provided by Withheld for Privacy ehf / Samy Badel, WIPO Case No. D2021-2214, KPMG International Cooperative v. Armand Salomon, WIPO Case No. D2019-0701, or KPMG International Cooperative v. VistaPrint Technologies Ltd, WIPO Case No. D2017-1239),
- the presence of the term “business” as part of the disputed domain name directly refers to the purpose of the services provided by the Complainant (in particular, in the fields of audit, tax, and advisory services),
- shortly after its registration, the disputed domain name has been used to send emails deceitfully impersonating a partner of the Complainant and even bearing the logo of the latter and the contact details of the office where this partner works.
It necessarily results from the above findings that the Respondent registered the disputed domain name with the will to target the Complainant’s prior trademark.
2) Use in Bad Faith
As mentioned above, the Respondent intentionally used the disputed domain name to impersonate a partner of the Complainant and while invited to defend his case, the Respondent has been remaining silent.
Such use of the disputed domain name, which notably amounts to identity theft, is deceptive and unlawful.
In that regard, it is consistently held that the use of a domain name for illegitimate activity, such as phishing or identity theft, is considered as manifest evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4 or KPMG International Cooperative v. Juan, WIPO Case No. D2021-0305).
Additionally, the Panel notes that the courier service appointed to communicate the Written Notice of the Complaint to the Respondent has not been able to do this because of the inaccuracy of the postal address communicated to the Registrar. Given the totality of the circumstances of this case, this is a further indicator of bad faith (See WIPO Overview 3.0, section 3.6).
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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-business.com> be transferred to the Complainant.
Date: March 4, 2022