figurative EU trademark registered with the EUIPO on June 27, 2000 under number 1179662 in classes 9, 16, 35, 36, 41 and 42.The Complainant is KPMG International Cooperative of the Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Armand Salomon of France.
The Disputed Domain Name <kpmg-mergers.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 28, 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 March 29, 2019 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 April 1, 2019.
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 April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 9, 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.
The Complainant’s network is one of the world’s leading providers of audit, tax and advisory services. It operates in approximately 153 countries, with more than 207,000 employees.
The Complainant, KPMG International Cooperative, owns over 480 trademark registrations containing the sign KPMG in a multitude of jurisdictions throughout the world, which it licenses to its member firms.
These include the following:
- KPMG, United States of America trademark registered with the United States Patent and Trademark Office (USPTO) on April 11, 2000 under number 2339547 in classes 9, 16, 35, 36, 37, 41 and 42;
- KPMG, European Union (“EU”) trademark registered with the European Union Intellectual Property Office (EUIPO) on April 25, 2000 under number 1011220 in classes 9, 16, 35, 36, 41 and 42;
- figurative EU trademark registered with the EUIPO on June 27, 2000 under number 1179662 in classes 9, 16, 35, 36, 41 and 42.
The Disputed Domain Name was registered by the Respondent on February 26, 2019 and appeared to resolve to a parking page containing sponsored links. According to the Complainant’s evidence, the Disputed Domain Name has been used in connection with a fraudulent email scheme.
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith, including through the use of an email address connected to the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities 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.
The Panel will therefore deal with each of these requirements.
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks and service marks in which the Complainant has rights. The Complainant’s KPMG mark has been registered and used.
The Disputed Domain Name incorporates the Complainant’s KPMG mark in its entirety with the mere addition of a hyphen and the word “mergers”. As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark generally does not prevent a finding of confusing similarity (see, Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
As far as the Disputed Domain Name is concerned, the word “mergers” is a common word in the English language. Therefore, the word “mergers” does not avoid a finding of confusing similarity to the Complainant’s trademark. See section 1.8 of the Overview of WIPO Panel Views on the selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here 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 Complainant’s trademark is clearly recognizable within the Disputed Domain Name. See section 1.7 of WIPO Overview 3.0.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was obviously not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has apparently used an email address connected to the Disputed Domain Name, pretending to be a KPMG representative and requesting the email recipient’s personal phone number. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive and well-known trademark in its entirety with the mere addition of a hyphen and a generic word. Moreover, the Complainant provides a copy of an email sent from an address connected to the Disputed Domain Name. In addition to the Complainant’s word marks, this email also includes the Complainant’s logo protected by figurative trademarks. Considering the distinctive character and the strong reputation of the Complainant’s trademarks, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
In the present case, the Panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world, including in France where the Respondent is residing. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. Further, the Respondent has apparently used an email address connected to the Disputed Domain Name to mislead the email recipient into disclosing personal information. The use of an email address associated with the Disputed Domain Name to send deceptive emails to obtain confidential personal information further constitutes bad faith (see section 3.4 of the WIPO Overview 3.0).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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-mergers.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: May 22, 2019