WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. Oneandone Private Registration, 1&1 Internet Inc / Atif Khan

Case No. D2019-1933

1. The Parties

Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing LLP, United Kingdom.

Respondent is Oneandone Private Registration, 1&1 Internet Inc, United States of America / Atif Khan, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <kpmg-gr.com> (the “Domain Name”) is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 16, 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 Respondent of the Complaint, and the proceedings commenced on August 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2019.

The Center appointed Marina Perraki as the sole panelist in this matter on September 16, 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.

4. Factual Background

According to the Complaint, Complainant’ s network is one of the world’s leading providers of audit, tax and advisory services. Those services are provided by Complainant’s network member firms under the trademark KPMG. Member firms of the KPMG network are affiliated with Complainant and operate in approximately 153 countries, with more than 207,000 employees. Complainant has been ranked consistently for many years as one of the “Big Four” professional services firms. Its current form and initials, KPMG, result from the merger between Peat Marwick International (PMI) and Klynveld Main Goerdeler (KMG) in 1987. Per Complaint, Complainant’s network has been using the trademark KPMG for over 30 years. The combined global revenues of Complainant member firms in 2018 were USD 28.96 billion.

Complainant is the owner of numerous KPMG trademark registrations, the use of which it licenses to member firms worldwide. These trademarks include:

- the United States trademark registration No. 2339547, KPMG (word), filed on July 3, 1997, registered on April 11, 2000, for inter alia services in international classes 35 and 36;
- the European Union trademark registration No. 1011220, KPMG (word), filed on December 3, 1998, registered on April 25, 2000, for inter alia services in international classes 35 and 36; and
- the European Union trademark registration No. 1179662, KPMG (figurative), filed on May 20, 1999, registered on June 27, 2000, for inter alia services in international classes 35 and 36.

KPMG brand has been consistently ranked among the world’s top brands for many years.

Complainant operates its global KPMG website at “https://home.kpmg/uk/en/home.html”.

The Domain Name was registered on March 26, 2019 and resolves to a website (the “Website”), which, per Complaint, is a near identical copy of Complainant’s official website, using the KPMG trademark in relation to the purported offering of auditing, taxation and advisory services in Greece and including the layout and presentation of articles and tabs of Complainant’s official website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use of the KPMG mark.

The Panel finds that the Domain Name <kpmg-gr.com> is confusingly similar with the KPMG trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The letters “gr”, which form the country code for Greece, added in the Domain Name, do not avoid a finding of confusing similarity, as they are non-distinctive and constitute a geographic, non-distinctive term (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 ).

Furthermore, the hyphen “-” which is added in the <kpmg-gr> portion of the Domain Name, does not avoid a finding of confusing similarity, as it is also non-distinctive (Arcelormittal v. Mesotek Software Solutions Pvt. Ltd., WIPO Case No. D2010-2049; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0 , section 1.8 ).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison, on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <kpmg-gr.com> is confusingly similar to the KPMG trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted a response to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, although the Domain Name, at the time of the decision, does not resolve to an active website, Complainant has provided evidence, in the form of screenshots, which demonstrates that the Domain Name used to resolve to a website containing text and content that suggested falsely that the Website is that of Complainant or of an affiliated entity or of an official dealer of Complainant.

Per the Complaint, Respondent is not an affiliated entity or an authorized distributor or reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

However, the Domain Name falsely suggested that it was an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduced, without authorization by Complainant, Complainant’s trademarks, in relation to the purported offering of auditing, taxation and advisory services in Greece and included layout and presentation of articles and tabs of Complainant’s official website.

The use of a domain name that intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.8).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per the Complaint, Complainant’s KPMG trademark is widely known for audit, tax and advisory services (KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard, Inc./ Kore Bailly, Blue Label, WIPO Case No. D2019-1112; KPMG International Cooperative v. Mickael Renaud, WIPO Case No. D2019-0246). Furthermore, the KPMG trademark is inherently highly distinctive, as it is a fictitious word, formed from the initials of two entities, namely Peat Marwick International (PMI) and Klynveld Main Goerdeler (KMG). Because the KPMG mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, the fact that the Website used to give the false impression that it emanated from Complainant and / or its group of companies or affiliated entities, further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).

The above also indicate that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displayed Complainant’s registered KPMG trademark and logo, thereby giving the false impression that it is operated by Complainant or a company affiliated with Complainant. The Domain Name intentionally created a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website to which it resolves. This is indicative of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; WIPO Overview 3.0, sections 3.3 and 3.4).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <kpmg-gr.com>, be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: September 30, 2019