WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deloitte Touche Tohmatsu v. Moniker Privacy Services / Dan Booker, Total Net Solutions Case No. D2008-1489 1. The Parties
The Complainant is Deloitte Touche Tohmatsu of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, United States of America (“United States” or “U.S.”).
The Respondent is Moniker Privacy Services, of Pompano Beach, Florida, United States / Dan Booker, Total Net Solutions of Greensborough, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 2, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 4, 2008, Moniker Online Services, LLC 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 October 14, 2008 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 October 16, 2008. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on November 26, 2008. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a Swiss Verein. A Swiss Verein is an entity without an exact legal counterpart in the United States, but which has certain of the attributes of an incorporated membership association. It has a legal personality separate and legally distinct from its members, which are the various professional services firms organized around the world and which use the DELOITTE & TOUCHE marks and similar names and marks in their practices under license from the Complainant.
4.2 The Complainant was formed to provide its member firms with specified services. The Complainant provides services only to its member firms and does not provide audit or other professional services to clients. In exchange for an annual contribution to the Verein, the member firms receive services such as protection of the firms' practice names, administrative services, risk management procedures, marketing, and technological support.
4.3 The Complainant and its member firms (each under written license from the Complainant) have been using the DELOITTE & TOUCHE marks since at least 1989. Collectively, the Complainant and its member firms employ more than 150,000 people in over 140 countries, including more than 40,000 in the United States alone.
4.4 In fiscal year 2007, the Complainant's member firms achieved a year of record growth, attaining aggregate revenues of USD 23.1 billion, with USD 9.85 billion in the United States. Aggregate global revenues for Complainant's member firms in 2008 are projected to be USD 27 billion.
4.5 The Complainant and its member firms currently spend tens of millions of dollars annually in advertisement and promotion of services rendered under the Complainant's DELOITTE & TOUCHE marks. Specifically in the United States, in 2006 and 2007, the Complainant's U.S. member firm expended USD 2.6 million on advertisements and promotions for the DELOITTE & TOUCHE brand each year. The Complainant and its member firms also regularly receive unsolicited press throughout the world, ranking amongst them, articles published in prominent publications such as Forbes, The New York Times, Fortune and The Wall Street Journal.
4.6 The Complainant and its member firms also receives dozens of awards and accolades annually. By way of example, between 2004 and 2007, Accounting Today magazine ranked the Complainant's U.S. member firm first on the Top 100 Tax & Accounting Firms. And in 2006 and 2007, the Complainant and its member firms were ranked first among the seven global tax and accounting firms in an annual survey of accounting professors.
4.7 In connection with its international member firms' businesses, the Complainant has obtained service mark registrations incorporating its DELOITTE & TOUCHE marks around the world. The Complainant also owns the following registrations of the DELOITTE & TOUCHE marks in the United States in connection with a variety of goods and services, including the Complainant's member firms' core accountancy, business management consultation and finance advisory services:
No. Mark Registration No. Registration Date International Class Specification of Goods or Services
i.
DELOITTE
3,002,108
September 27, 2005
9
Computer software in the field of business administration, human resources, financial management, bookkeeping, auditing, accounting, tax analysis, database management and the facilitation of project planning for the design, development, implementation and maintenance of computer and information systems
35
Business management; business administration; bookkeeping services; accounting services; account and business auditing services; tax preparation; tax compliance and consultation services; business and government management consulting services; services rendered on assistance and advice on organization and management of businesses or trading functions of commercial or industrial companies; economic research in the attainment of benefits, business interruption and loss determination
36
Insurance consultation and advisory services; financial planning, consulting and management services; actuarial services; financial research services, including in the fields of benefits, business interruption and loss determination; real estate investment services; financing services
42
Design and development of computer hardware and software; consulting services in the field of computer based information systems for businesses; consulting services in the field of identification, prioritization, analysis, design, development and implementation of computer-based information systems for insurance and other financial service business and other industries; technical consulting and assistance with computer-based information systems and components thereof; litigation support services including investigative audits and financial analyses; computer assurance services relating to the development of security systems and contingency planning for information systems
ii.
DELOITTE & TOUCHE
1, 602,793
June 19, 1990
Appraisal services in the field of industrial and commercial property appraisals, machinery and equipment appraisals, capital stock valuations appraisals, and financial analysis and consulting services
iii.
DELOITTE & TOUCHE
2,052,869
April 15, 1997
Computer programs in the field of business administration, human resources, financial management, bookkeeping, auditing, accounting, tax analysis, database management and the facilitation of project planning for the design, development, implementation and maintenance of computer and information systems and instruction manuals distributed therewith
4.8. The Complainant also maintains an Internet website at , providing the technology platform for country-specific websites around the world, including the site of its U.S. member firm. The Complainant and its member firms have maintained global and member firm websites at the domain name since 1995.
4.9 Depending on the time when one inputs the disputed domain name, one of several different websites appears, each of which contains lists of hyperlinks, including hyperlinks to third party websites that offer goods and services that are directly competitive with the goods and services of the Complainant's member firms.
4.10 On one version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top left side of the page “DELOTTETOUCHE.COM”, below which is a list of finance-related companies (e.g., Deloitte Touche, American Express, Western Union) and finance-related topics (e.g., Refinancing, Financial Help, Financial Management). On the right side of the page is a scenic image over which Complainant's DELOITTE mark appears. When a user clicks on any one of the finance-related companies or finance-related topics on the home page, the user is taken to another page within the site containing “Sponsored Results [Company / Topic]” which are links to the websites of third parties that offer goods or services related to the company or topic, many of which are websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of Complainant's member firms (e.g., BNY Mellon Wealth Management, Advisor World, Ameriprise Financial, CAP Advisors LLC).
4.11 On another version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top “DELOTTETOUCHE.COM”, below which is a list of product and service categories and subcategories. When a user clicks on any one of the product and service subcategories, the user is taken to another page within the site containing “Sponsored listings” which are links to the websites of third parties that offer goods or services within that subcategory. For example, the first-listed service category on the home page is “Finance”, which includes “Tax” and “Investment” as subcategories. When a user clicks on the “Tax” and “Investment” subcategories, the user is taken to webpages that provide further links to websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of the Complainant's member firms (e.g., TurboTax, JRH Associates, T, A&R Associates).
4.12 On a third version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top of the page “DELOTTETOUCHE.COM What you need, when you need it”, below which are two columns of “Related Searches”. These columns contain a list of finance-related topics (e.g., Finance, Business, Accounting Software). When a user clicks on any one of these topics, the user is taken to another page within the site containing “Sponsored listings” which are links to the websites of third parties that offer goods or services related to the topic, many of which are websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of the Complainant's member firms (e.g., Quick Books, HSBC Direct, F, GMAC Bank).
4.13 Regardless of which of these websites appears at the disputed domain name, consumers that type in the disputed domain name when looking for Complainant's services or information concerning the Complainant's services are led away from the Complainant's services to those of its competitors by virtue of its receipt of the “click-through” revenues generated by such link-laden domain name parking sites.
4.14 Upon learning of the above use of the disputed domain name, the Complainant sent a letter to the registrant of record – Moniker Privacy Services – demanding that the infringing conduct cease immediately and that the disputed domain name be transferred to the Complainant, to which the Complainant did not receive a reply. 5. Parties' Contentions 5.1. Complainant
The Complainant contends as follows:
(a) The disputed domain name is confusingly similar to the Complainant's marks, as is practically identical to the Complainant's DELOITTE & TOUCHE mark, but for the ampersand and the letter “i”. The Complainant argues that:
(i) when Internet users looking for legitimate services offered by the Complainant mistakenly type the disputed domain name into the address bar of their Internet browser (i.e., by misspelling / mistyping DELOITTE and omitting the letter “i”), they are led to a link-laden website, from which numerous third party websites, including sites of the Complainant's competitors, may be accessed;
(ii) the Respondent seeks to capitalize on a classic form of typosquatting by omitting the letter “i” from the Complainant's DELOITTE & TOUCHE mark (an ampersand cannot be used in a domain name and is typically omitted from domain names for company names that incorporate one) so that an Internet user who makes this typographical error when typing in Complainant's website address will be diverted to Respondent's site instead.
(b) The Respondent has no rights or legitimate interest in the disputed domain name. In support thereof, the Complainant relies on the following factors:
(i) the Complainant and the Respondent have no relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the DELOITTE & TOUCHE mark;
(ii) the disputed domain name is not, nor could it be contended to be, a nickname of the Respondent or in any other way identified with or related to a right or legitimate interest of the Respondent;
(iii) the Respondent registered the disputed domain name for the purpose of diverting traffic to web-pages that have no relationship to the Complainant. In fact, many of the goods and services offered on such web pages compete with the Complainant's services. On information and belief, the Respondent has profited from diverting Internet traffic intended for the Complainant's client to the sites of these third parties by generating click-through revenue.
(c) The Registrant registered and is using the disputed domain name in bad faith. In this regard, the Complainant relies on the following circumstances:
(i) the DELOITTE & TOUCHE marks enjoy widespread recognition. It is therefore inconceivable that the Respondent was unaware of the DELOITTE & TOUCHE marks when it registered the disputed domain name. Given the fame of the DELOITTE & TOUCHE marks and the fact that the disputed domain name is so obviously connected with Complainant's famous marks, the Respondent's bad faith may be presumed;
(ii) the Respondent's attempt to mislead Internet users by operating a website at a domain name consisting of a typographical error of the Complainant's DELOITTE mark is a form of typosquatting that has been recognized as bad faith use of a domain name under the UDRP;
(iii) the format of the Respondent's website at the disputed domain name – with links leading visitors to other commercial sites – strongly suggests that the Respondent is obtaining “click-through” revenue from the disputed domain name. This exploitation of the Complainant's goodwill for financial gain by creating confusion demonstrates the Respondent's bad faith. Moreover, the fact that many of the featured links compete directly with the Complainant's services is further evidence of the Respondent's bad faith. 5.2. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith. 6.1. Identical or Confusingly Similar
This Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the marks DELOITTE & TOUCHE and DELOITTE. These marks have been used extensively by the Complainant and its worldwide member firms since at least 1989. It is well regarded that the Complainant and its member firms constitute one of the world's “Big 4” accounting firms.
In fact, the Complainant had filed UDRP proceedings previously and successfully recaptured domain names incorporating words confusingly similar to the DELOITTE & TOUCHE marks. In one such proceeding, in rendering its decision, the panelist explained that the Complainant “is an association of firms providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names ‘Deloitte Touche Tohmatsu' and ‘Deloitte & Touche.' These names are frequently shortened to ‘Deloitte.' The Complainant's member firms constitute one of the ‘big 4' international accountancy practices…” (see Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584 (where the domain name was found confusingly similar to the Complainant's mark DELOITTE).
This Complaint revolves around the registration of the domain name . When comparing this domain name with the DELOITTE & TOUCHE mark owned by the Complainant, one will note that the only difference between the two is the omission of the ampersand and the letter “i”. Ampersands are not permitted to form domain names and the omission of the letter “i” does not change the confusing similarities between the Complainant's marks and the relevant domain name.
Intentional misspellings of domain names are not uncommon. These acts are usually referred to as “typosquatting”. Typosquatting in its various forms “has been universally condemned in numerous URDP decisions” and is sufficient, by itself, to establish confusing similarity (see E, Inc. v. Triple E Holdings Limited.,WIPO Case No. D2006-1095; Gaetano, Inc. d/b/a Lisa Curran Swim v. Texas International Property Associates,WIPO Case No. D2007-1428).
Given the Complainant's rights in the DELOITTE & TOUCHE mark and the confusing similarity thereof with the disputed domain name, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant. 6.2. Rights or Legitimate Interests
The Complainant's assertions were not rebutted by the Respondent to indicate whether it had rights or legitimate interests to the disputed domain name.
There is nothing in the Respondent's name to indicate that it is commonly known by the domain name. The Complainant also dispelled any possibility of having licensed, consented or permitted the use of the DELOITTE & TOUCHE mark or the disputed domain name by the Respondent.
The Complainant adduced convincing evidence to suggest that the website which is displayed when one types in the disputed domain name is intended to generate click-through revenue by diverting Internet traffic from the Complainant's website. There does not, therefore, appear on the present record to be any grounds that the Panel can find to support a counter-argument by the Respondent that the disputed domain name is being used for legitimate non commercial or fair use (see Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102 where it was held that a multitude of links to e-commerce websites can be reasonably presumed to demonstrate commercial benefit).
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant. 6.3. Registration and Use in Bad Faith
It appears, on a balance of probabilities, that the Respondent generates Internet traffic (and commercial gain resulting from the flow of such traffic) from the confusion which arises due to the similarities between the Complainant's well-known DELOITTE & TOUCHE mark and the disputed domain name. This suggests opportunistic bad faith on the part of the Respondent.
In Digital Spy Limited v. Moniker Privacy Services and Express Corporation,WIPO Case No. D2007-0160, the Panel held that “[r]egistering a domain name with knowledge of another company's rights in the name, and with intention to divert traffic is evidence of bad faith.” In Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, it was also held that the domain name “[] is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
In Nintendo of America, Inc. v. P, Jerry Radl, and Fusion Media Solutions, Inc.,WIPO Case No. D2001-1020, a finding of bad faith was also made based on a website format used to generate “click-through” revenue for the Registrant and in ACCOR v. Steve Kerry / North West Enterprise, Inc.,WIPO Case No. D2006-0649, the use of a confusingly similar domain name to attract Internet users to a website with links to sites offering goods similar to the complainant's goods established bad faith.
Based on the evidence adduced, this Panel also concludes that the disputed domain name was calculatively misspelled by the Respondent in order to take advantage of typographical errors made by Internet users. This is a form of typosquatting that has been recognized as bad faith use of a domain name under the UDRP. Where, as here, “a Domain Name constitutes a common misspelling of a protected mark, ‘typosquatting' has often been held to be ‘inherently parasitic and of itself evidence of bad faith'.” (see American Funds Distributors Inc. v. Texas International Property Associates,WIPO Case No. D2007-0994).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: December 10, 2008
Full & Egal Universal Law Academy