WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Supervision Audio Video Inc Search-Universal.com
Case No. D2011-0187
1. The Parties
Complainant is Deloitte Touche Tohmatsu, Zurich, Switzerland, represented by Fross Zelnick Lehrman & Issue, PC, United States of America.
Respondent is Supervision Audio Video Inc Search-Universal.com, Laval, Canada.
2. The Domain Name and Registrar
The disputed domain name is <514deloitte.com> which is registered with Blue Razor Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1, 2011, the Center transmitted by email to Blue Razor Domains, Inc. a request for registrar verification in connection with the disputed domain name. On February 1, 2011, Blue Razor Domains, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 24, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on March 11, 2011. This Panel finds that it was properly constituted. This 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.
On March 11, 2011, the Center received an email communication from Respondent.
4. Factual Background
Complainant is a Swiss association, with place of business at Zurich, Switzerland.
Complainant’s independent member firms around the world provide audit, consulting, financial advisory, risk management and tax services.
Complainant has rights over the DELOITTE and DELOITTE & TOUCHE trademarks and trade names, for which it holds several registrations around the world, including, among others:
DELOITTE, registration No. TMA655396 with the Canadian Intellectual Property Office (CIPO), registered in 2005, international classes 9, 35, 36, and 42; and registration No. 3002108 with the United States Patent and Trademark Office (USPTO), registered in 2005, international classes 9, 35, 36, 42;
DELOITTE & TOUCHE, registration No.TMA481233 with the CIPO, registered in 1997, international classes 9, 35, 36, and 42; registration No. 2052869 with the USPTO, registered in 1997, international class 9, and registration No. 1602793 with the USPTO, registered in 1990, international class 36.
The disputed domain name was created on December 3, 2006.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant has rights over the DELOITTE and DELOITTE & TOUCHE trademarks and trade names, for which it holds several registrations around the world.
DELOITTE is the brand under which tens of thousands of dedicated professionals in independent firms throughout the world collaborate to provide audit, consulting, financial advisory, risk management and tax services to selected clients. These firms are members of Complainant and of Deloitte Touche Tohmatsu Limited. Each member firm provides services in a particular geographic area and is subject to the laws and professional regulations of the particular country or countries in which it operates. Neither Complainant nor Deloitte Touche Tohmatsu Limited itself provides any services to clients.
Complainant and its member firms (each under written license from Complainant) have been using the DELOITTE trademarks and trade names since at least 1989. All good will developed from Complainant’s member firms’ use of the DELOITTE marks and domain names incorporating the DELOITTE trademarks inures to the benefit of Complainant pursuant to the license agreements between Complainant and its member firms.
Complainant and its member firms, all of which use the DELOITTE marks, employ more than 170,000 people in over 140 countries, including Canada. In fiscal year 2010, Complainant’s member forms attained aggregate revenues of USD 26,6 billion.
Complainant and its member firms have developed substantial goodwill in the DELOITTE marks and such marks and trade names have become famous throughout the world.
Complainant and its member firms currently spend tens of millions of United States dollars annually in advertisement and promotion of services rendered under Complainant’s marks, which have come to be recognized as exclusively identifying Complainant’s member firms’ high-quality services around the world.
Given the renown and success of Complainant’s member firms, Complainant and its member firms regularly receive unsolicited press throughout the world. Also, Complainant and its member firms receive dozens of awards and accolades annually.
Complainant has followed several UDRP procedures and successfully recaptured domain names incorporating words confusingly similar to the DELOITTE marks.
Complainant has maintained an Internet website at “www.deloitte.com” since 1995, providing the technology platform for country-specific websites around the world, including the site of its Canadian member firm.
Respondent is a communication equipment company, with no known affiliation with or connection to Complainant or any of its member firms.
On June 26, 2009, Complainant sent a letter to Respondent complaining on the latter’s registration of the disputed domain name and demanding that Respondent transfer the disputed domain name to Complainant. On July 16, 2009, Complainant sent another letter to Respondent concerning its use and registration of the disputed domain name, repeating its demands from the June 26, 2009 letter. Complainant has received no response to such letters.
The disputed domain name is confusingly similar to the DELOITTE mark, as the disputed domain name incorporates the DELOITTE mark in its entirety. The addition of the “514” in the disputed domain name is the telephone area code for Laval, Quebec, where the Respondent is located and which is the largest suburb of Montreal. The mere addition of such generic term to a trademark does not distinguish the disputed domain name from the DELOITTE mark.
The generic top level domain (“gTLD”) indicator “.com” cannot be taken into consideration when judging confusing similarity.
Respondent has no rights or legitimate interests in the domain name.
Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. Respondent registered the disputed domain name on December 3, 2006, long after Complainant had established rights in its DELOITTE marks through extensive use around the world.
No relationship exists between Respondent and Complainant or any of Complainant’s licensees, agents or affiliated companies, that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name, which incorporates and is confusingly similar to the DELOITTE marks. Respondent is not commonly known by the disputed domain name.
Since the DELOITTE marks are so well-known and Respondent has no rights therein, the only reason that Respondent could have for registering and using the disputed domain name is that Respondent knew of the DELOITTE marks and wanted to trade on Complainant’s renown to lure consumers to its website.
Respondent registered and is using the disputed domain name in bath faith.
Respondent registered the disputed domain name in bad faith. The DELOITTE marks enjoy widespread recognition. Given the fame of the DELOITTE marks and the fact that the disputed domain name is so obviously connected with Complainant’s famous marks, Respondent’s bad faith may be presumed.
Respondent is using the disputed domain name in bad faith. Though Respondent appears to have made no use of the disputed domain name to date, Respondent’s passive holding of the disputed domain name is still considered to be use in bad faith.
When a Internet user types in the disputed domain name, they are redirected to a holding page that reads “Coming Soon- check back!” The rest of the website at this holding page is a standard parking page with links to various domain name registration services offered by the Registrar.
Respondent was given an opportunity to explain its basis for using the DELOITTE mark in the disputed domain name when it received the letters from Complainant. The fact that Respondent could not and did not set out any rights or legitimate interests in the disputed domain name is evidence that none exist.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions. However, on March 11, 2011, Respondent filed with the Center an email communication stating the following: “ [...] we aggree to simply resign and delete the registtration. […] That registration was not done to do wrong business with anyone and is not important for us. so we aggree to resign without cost or penality, just tell us how we must do that [...]”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
Respondent’s email communication of March 11, 2011, cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b) 1. Further, such email communication was filed with the Center a couple of weeks after the Center notified Respondent’s default. Thus this Panel has decided not to take into account such email communication from Respondent.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the DELOITTE and DELOITTE & TOUCHE trademarks.
The disputed domain name entirely incorporates the DELOITTE trademark adding the prefix “514”. The addition of the numbers “514” in the disputed domain name is not enough to avoid similarity, nor do they add anything to prevent the likelihood of confusion. Prior panel decisions support this Panel’s view (See. Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s DELOITTE trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent has no relationship with Complainant or any of Complainant’s licensees, agents or affiliated companies, and that Complainant has never licensed or authorized Respondent to use Complainant’s trademarks in the disputed domain name. Furthermore, Complainant contends that Respondent has never been known by the disputed domain name.
It is undisputed that Complainant and Complainant’s trademarks are well known internationally. Further, it is clear that Respondent registered the disputed domain name years after Complainant established rights in its DELOITTE and DELOITTE & TOUCHE trademarks.
Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show Registrar sponsored advertisements. Such use of the DELOITTE trademark by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.
There is no evidence in the file of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3. Based on the aforesaid, and in the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s DELOITTE trademark, this Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
This Panel notes that, as pointed out before, Complainant and Complainant’s trademarks are well-known internationally.
Taking into consideration Complainant’s international prestige and presence, and the registration, wide use, and international recognition of Complainant’s trademarks, besides that Complainant’s DELOITTE trademark is registered in Canada (among other jurisdictions), country where Respondent is domiciled pursuant to the Registrar’s report, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant and Complainant’s trademarks at the time it obtained the registration of the disputed domain name.
Paraphrasing a largely-cited decision, in incorporating in its entirety Complainant’s DELOITTE trademark (albeit with the prefix “514”) the disputed domain name results in a so-obvious connection with Complainant and Complainant’s DELOITTE trademark that its very use by someone with no connection with them suggests opportunistic bad faith.4 The fact that the website associated with the disputed domain name is used to show sponsored advertisements also suggests that Respondent is using Complainant’s well-known trademark to attract Internet users for commercial gain.
Finally, Respondent’s failure to respond to Complainant’s letters is indicative of bad faith as well.5
In light of all the above, this Panel finds that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name <514deloitte.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: March 25, 2011
1 Similar situations in LEGO Juris A/S v. Charlie Carmichael, WIPO Case No. D2010-1507 and in World Wrestling Entertainment, Inc. v. Ki Sung, WIPO Case No. DMX2009-0005, where this Panel also declined to take into account as official response an email communication.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
5 See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.