The Complainant is Baker Tilly International Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Wragge & Co., UK.
The Respondent is Baker Tilly MKM of Dubai, United Arab Emirates ("UAE"), internally represented.
The disputed domain name <bakertillymkm.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2014. The Response was filed with the Center on May 14, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on May 20, 2014. 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 filed an unsolicited supplemental submission ("Complainant's Supplementary Submission") with the Center on May 26, 2014. On May 28, 2014, the Panel issued a procedural order ("Panel Procedural Order No. 1") accepting the Complainant's Supplemental Submission for filing, and inviting the Respondent, should it so desire, to submit a reply on or before June 3, 2014. The Respondent submitted its reply to the Center on June 2, 2014. In its reply, the Respondent also requested appointment of a three-member panel. Both parties had elected in their initial submissions to have the dispute resolved by a single-member panel, and consequently the Panel issued a further procedural order ("Panel Procedural Order No. 2") dated June 9, 2014 denying the Respondent's untimely request for appointment of a three-member panel. In view of the foregoing developments, the date for the Panel to submit its decision to the Center was extended to June 17, 2014.
The Complainant is a member services organization, incorporated in the UK. The Complainant manages a worldwide network of independent, locally owned and locally operated accounting firms (hereinafter the Complainant's "members" or "member firms").
The Complainant has submitted evidence of the registration of BAKER TILLY as a trademark in the UK, the United States of America, the UAE, as a Community Trademark (CTM), and designations in numerous other countries under the Madrid Protocol. The mark is registered in connection with financial, investment, and accountancy services, including provision of services of independent financial advisors. The earliest of the BAKER TILLY registrations was issued in the UK in 2002; there are two (2) UAE registrations were issued in 2009 and 2011, respectively, both of which were applied for in November 2005.
The owner of record for all such registrations is Arrandco Investments Limited ("Arrandco"), headquartered in the UK. The Complainant has submitted as an annex to the Complaint a license agreement with Arrandco under which the Complainant is granted rights to use and license the use of the BAKER TILLY name and mark. The license agreement permits the Complainant to grant sublicenses to members respecting the use of the BAKER TILLY name and mark. As a result, according to the Complainant, although none of the members are owned by the Complainant, many of the Complainant's member firms incorporate "Baker Tilly" in their names to the extent permitted under the sublicense agreement.
There seems to be no dispute that the Respondent, doing business under a different trading name, was a member of the Complainant's network at least as far back as 2002. In 2008 the Respondent was reorganized as a partnership, at which point the Respondent sought the Complainant's approval to change the firm's name to Baker Tilly MKM and admit the Respondent as a member firm. The Complainant formally consented to this name change on August 28, 2008, subject to the approval of local authorities. Pursuant to an Accession Agreement dated September 23, 2008, the Respondent was admitted as a new member with an effective date of August 15, 2008.
Additionally, on September 23, 2008, the Complainant and the Respondent entered into a trademark sublicense agreement, under which the Respondent's use of "Baker Tilly MKM" as a business or trading name was recognized as a "Permitted Form" of use respecting the BAKER TILLY mark. As regards domain names, the license agreement provided: "The Licensee shall not adopt or use any trade mark, symbol, device, service mark, domain name or company, business or trading name which incorporates or is confusingly similar to any Trade Mark except where this constitutes a Permitted Form." The record reflects that the Respondent registered the disputed domain name <bakertillymkm.com> on September 6, 2008.
More recently, the relationship between the Complainant and the Respondent has soured, as has the relationship between the Respondent's one time partners. The Complainant by letter dated February 13, 2013, provided notice that the Respondent's membership status would be terminated with effect from August 12, 2013. It appears that two of the Respondent's partners (or former partners) formed a separate accountancy firm, which has been admitted as a member of the Complainant's network and trades under the name Baker Tilly JFC. The Complainant has demanded, based on the termination of the Respondent's membership status, that the Respondent cease and desist using the BAKER TILLY mark and the disputed domain name. Notwithstanding, the Respondent continues to operate as Baker Tilly MKM and to use the disputed domain name, maintaining that it has a lawful right to do so. The Respondent at one point initiated court proceedings in which both the owners of Baker Tilly JFC and the Complainant were named as parties. It appears from the record that the dispute between the Respondent and the former partners has been submitted to arbitration, and that the Complainant is not a party in that proceeding.
The Complainant asserts rights in the BAKER TILLY mark by virtue of its status as an exclusive licensee of Arrandco, the trademark owner of record. The Complainant submits that the disputed domain name is confusingly similar to the Complainant's BAKER TILLY mark because it incorporates the mark in its entirety. According to the Complainant, the addition of the suffix "mkm" (which according to the Complainant stands for the names of the Respondent's three partners) does not serve to dispel the confusing similarity of the disputed domain name with the Complainant's mark.
The Complainant avers that due to the longevity of trading and extensive promotion the Complainant has a substantial reputation in the BAKER TILLY mark. The Complainant submits that it is one of the world's top ten accountancy and business advisory networks, that the BAKER TILLY mark is well known, and that the mark has come to denote services originating solely from those in the Complainant's network. The Complaint thus posits that Internet users are likely to be misled by the disputed domain name as used by the Respondent, and are likely to believe that they are entering the site of a member of the Complainant's network, or that the website otherwise is in some way connected to the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, while the Respondent once was a licensee of the Complainant, the Respondent was never authorized to register the disputed domain name. The Complainant further submits that as the license has been terminated the Respondent no longer has any right whatsoever to use the BAKER TILLY mark. According to the Complainant, the Respondent's website closely mimics the websites of the Complainant's authorized members in a number of respects, and the Complainant contends that the Respondent is passing itself off as a member firm of the Complainant, creating Internet user confusion and engaging in unfair competition with respect to the Complainant and its member firm Baker Tilly JFC. The Complainant thus submits that the Respondent, even though offering services, is not making a bona fide use of the disputed domain name.
Based on the foregoing the Complainant further alleges that the Respondent's registration and use of the disputed domain name is in bad faith. Specifically, the Complainant asserts that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the Respondent's affiliation with the Complainant, within the purview of paragraph 4(b)(iv) of the Policy. The Complainant submits that no question exists that the Respondent, since its termination as a member of the Complainant's network, has been using the disputed domain name in bad faith. The Complainant further asserts that the Respondent acted in bad faith when registering the disputed domain name because (1) the registration predated the execution of the trademark sublicense agreement; (2) the Respondent did not have authority to register and use the disputed domain name; and (3) even if the Respondent mistakenly believed it was authorized to register the disputed domain name, the Respondent must have appreciated even then that it would be required to stop use of the disputed domain name should it cease to be a part of the Complainant's network. The Complainant contends that the Respondent's refusal to cease using the disputed domain name evinces that the Respondent had in mind at the time of registration that it would continue to use the disputed domain name notwithstanding the termination of the Respondent's membership in the Complainant's network. Accordingly, the Complainant submits that the Respondent thus acted in bad faith when registering the disputed domain name.
Alternatively, relying primarily on Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, the Complainant asserts that bad faith registration can be deemed to have occurred without regard to a registrant's state of mind at the time of registration if the domain name subsequently is used to trade on the goodwill of the mark holder. The Complainant further argues that Section 2 of the Policy reflects a continuing representation and warranty by the registrant that the domain name will not be used in violation of any laws or regulations – that is, both now or in the future.
The Respondent submits that the disputed domain name <bakertillymkm.com> is not confusingly similar to the Complainant's BAKER TILLY mark. The Respondent maintains that the disputed domain name is "unique", and notes the use by others members of the Complainant's network of other "Baker Tilly prefix" names. According to the Respondent, an Internet search for "Baker Tilly" does not produce a hit for the Respondent's website.
The Respondent contends that it has rights and legitimate interests in the disputed domain name for the following reasons. The Respondent asserts that it has rights in the disputed domain name because it has obtained professional licenses from the UAE Ministry of Economy, the Abu Dhabi Business Center, and the Government of Dubai under the trade name Baker Tilly MKM. The Respondent maintains based on these licenses that it has registered trademark rights in the Baker Tilly MKM name, and that the UAE license authorizes the Respondent to own the disputed domain name. The Respondent further asserts rights and legitimate interests based on the Respondent's use of the disputed domain name since 2008 in connection with the professional services that it is legally registered to provide. The Respondent also asserts rights in the disputed domain name based on the trademark sublicense agreement with the Complainant.
The Respondent denies any bad faith in connection with the registration and use of the disputed domain name. The Respondent specifically denies registering the disputed domain name for purposes of selling, renting or transferring it; registering the disputed domain name to prevent the mark owner from reflecting its mark in a corresponding domain name; registering the disputed domain name for the purpose of disrupting the business of any competitor; or intentionally attempting to profit from the commercial use of the disputed domain name by creating a likelihood of confusion with the Complainant's mark.
According to the Respondent, under UAE law the trademark cannot be cancelled without the Respondent's consent as the licensee. The Respondent further alleges that the Complainant has colluded with the Respondent's former partners, who now are competing against the Respondent. The Respondent alleges this is a violation of the Complainant's agreements with the Respondent.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000‑0270.
The Panel finds that the disputed domain name <bakertillymkm.com> is confusingly similar to the Complainant's BAKER TILLY mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant's mark in its entirety. The addition of the letters "mkm" in the Panel's view does not serve to overcome the confusing similarity of the disputed domain name to the Complainant's mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. However, the ultimate burden of persuasion always rests with the complainant as to all three elements of the Policy.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no dispute in the record that the Complainant in 2008 authorized the Respondent, as a member of the Complainant's network, to trade under the name Baker Tilly MKM, and that under the terms of the trademark sublicense agreement entered into between the Parties this constituted a "Permitted Form" of use respecting the Complainant's BAKER TILLY mark. The Complainant insists, however, that the Respondent was not authorized to register the disputed domain name. Regardless, and assuming arguendo that this is so, there can be no serious dispute that the Respondent, at least prior to its termination as a member of the Complainant's network in 2013, was making a permitted use of the trading name Baker Tilly MKM in connection with a bona fide offering of goods or services. The Panel would be hard pressed to conclude that the Respondent's trading name is not on its face "a name corresponding to the disputed domain name."
There is also a question in the Panel's mind whether the trademark sublicense agreement operates to proscribe the Respondent's registration of a domain name corresponding to the Respondent's permitted Baker Tilly MKM trading name. The relevant language in the trademark sublicense agreement, as noted earlier, provides: "The Licensee shall not adopt or use any trade mark, symbol, device, service mark, domain name or company, business or trading name which incorporates or is confusingly similar to any Trade Mark except where this constitutes a Permitted Form" (emphasis added). This language in the Panel's view is unclear as to whether the Respondent could register a domain name reproducing the Respondent's permitted trading name, i.e. whether the disputed domain name would be a "Permitted Form."
It appears from statements made in the Complaint that in other instances the Complainant has sublicensed member firms to use "Baker Tilly prefix" trading names. There is no evidence in the record whether other members of the Complainant's network have registered or sought to register "Baker Tilly prefix" domain names, although the Respondent alludes to this. It strikes the Panel that other members might wish to register such domain names. The Panel further observes that the Complainant has not indicated that it ever objected to the Respondent's registration of the disputed domain name prior to the Complainant's termination of the Respondent's member status in 2013.
At the same time, there are also questions whether the Respondent rights in the disputed domain name, if any, would arise independent of those granted by the Complainant. These questions implicate contractual and legal issues, some of which appear beyond the scope of the Policy. Regardless, in view of the Panel's findings under the following heading it is unnecessary for the Panel to decide the issue regarding the Respondent's rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (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 disputed domain name; or
(ii) circumstances indicating that the Respondent registered the disputed 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) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel also notes, however, that the Policy by its own terms is not applicable to any and all disputes involving domain names. Accordingly, it is paramount that panels decide cases based on the very limited scope of the Policy. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
After careful consideration of the totality of circumstances in the record in this administrative proceeding, the Panel concludes that the Complainant has not met its burden of demonstrating that the Respondent registered the disputed domain name in bad faith.
As noted earlier, the Complainant insists that the Respondent was never authorized to register a domain name incorporating the Complainant's BAKER TILLY mark, and that consequently the Respondent's registration of the disputed domain name should be found to be in bad faith. For reasons discussed above, the Panel does not find the record in this case sufficiently clear to support a conclusion that the Respondent acted in bad faith when registering a domain name corresponding to the Baker Tilly MKM trading name, given the lack of clarity whether this domain name also could have been considered a "Permitted Form" of use under the trademark sublicense agreement. Additionally, there is no evidence in the record that the Complainant ever objected to the Respondent's registration of the disputed domain name before 2013, some five (5) years following the registration, and by all appearances then only due to the termination of the Respondent's member status.
In the circumstances of this case, the Panel does not believe that a different outcome should obtain under the bad faith registration analysis utilized by the distinguished panel in Octogen, supra. The Octogen panel made clear that what constitutes bad faith registration "will necessarily depend on an analysis of the facts and circumstances of any given case."
The facts and circumstances in the instant case are dissimilar to those in Octogen. In the instant case the Respondent is claiming that it has rights in the trade name Baker Tilly MKM, notwithstanding the Complainant's decision to terminate the Respondent's member status in the Complainant's BAKER TILLY network. The domain name dispute is intertwined with this broader dispute between the Parties. Whether the Respondent has established protectable trademark rights in Baker Tilly MKM, or whether the Respondent instead is now infringing the Complainant's BAKER TILLY mark, are matters in the first instance to be determined in a competent court, and in the Panel's view fall outside the limited scope of the Policy. Unlike Octogen, the Respondent's use of the disputed domain name is basically unchanged, although changed circumstances here give rise to serious questions regarding the Respondent's continuing use. Taking into account all of the foregoing, the Panel does not consider that a finding of bad faith registration is supported by the totality of facts and circumstances in this case.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
The Policy by its own terms is not applicable to any and all disputes that involve or touch upon domain names. Some disputes are more properly resolved by traditional means. For the reasons set forth above, the Complaint is denied.
William R. Towns
Sole Panelist
Date: June 17, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.