WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International Cooperative v. Cimpress Schweiz GmbH
Case No. DCO2018-0039
1. The Parties
The Complainant is KPMG International Cooperative of Amstelveen, Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <kprng.co> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2018, 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 9, 2018, 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, 2018.
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, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 20, 2018. 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’s network is one of the worlds leading providers of audit, tax and advisory services. Those services are provided by the Complainant member firms under the trade mark KPMG. Among others, European Union Trade Mark Registration Number 001011220 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. Member firms of the Complainant network of independent firms are affiliated with the Complainant. The KPMG member firms operate in approximately 150 countries, with over 189,000 employees. The Complainant owns the trade mark KPMG, which is registered throughout the world, and it licenses its use to the KPMG member firms worldwide.
The global and member firm KPMG websites operate mainly under the flagship domain name <kpmg.com>. The Complainant operates the global KPMG website at “the aforementioned domain name”.
The disputed domain name was registered on September 24, 2018. It does not resolve to an active website.
5. Parties’ Contentions
The disputed domain name comprises of the letters “kprng”. When combined in lower case, the letters "rn" are visually almost identical to the letter “m”. The letters “kprng” are therefore almost identical to the letters “kpmg” and the distinctive and famous KPMG trade mark. The Complainant therefore asserts that the disputed domain name is confusingly similar to the KPMG trade mark.
The Complainant further asserts, that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant thus asserts
- that the Respondent is using the disputed domain name fraudulently;
- that 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;
- that there is 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
- that 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.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent has thus used the disputed domain name on at least one occasion in an unlawful attempt to arrange a fraudulent money payment or obtain confidential data from an employee of a KPMG member firm, by way of an email scam. By using the disputed domain name this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants famous KPMG mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, just as the registration and use of the disputed domain name will disrupt the business and image of the KPMG network by misleading members of the public into believing that the disputed domain name relates to the Complainant.
The Respondent did not reply to the Complainant’s contentions.’
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <kprng.co> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark KPMG. The disputed domain name merely replaces the letter “m” in Complainant’s mark with the visually similar combination of the letters “rn”. The Top-Level Domain “.co” does not dispel a finding of confusing similarity in the present case. See ArcelorMittal SA v. Tina Campbell, WIPO Case No. DCO2018-0005.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been using the disputed domain name (discussed below) the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 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 the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record of the longstanding of use of the Complainant’s trademark, and the distinctive nature and the repute of the mark KPMG, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Respondent has used the disputed domain name for what appears to be a phishing scam to deceive at least one employee of a KPMG member firm to respond to an allegedly sent e-mail containing “payment instruction details” by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy, see, inter alia, National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232; Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849 and Boursorama SA v. Estrade Nicolas, WIPO Case No. D2017-1463.
Noting that the disputed domain name incorporates a registered and widely-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <kprng.co> be transferred to the Complainant.
Date: January 3, 2019