WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ernst & Young Global Limited v. Latin American Trade Case No. D2009-0138 1. The Parties
Complainant is Ernst & Young Global Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by the Gigalaw Firm, United States of America.
Respondent is Latin American Trade of San Jose, Costa Rica. 2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2009. On February 3, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On February 4, 2009, Intercosmos Media Group d/b/a directNIC.com 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 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 4, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 11, 2009. 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
Complainant is a global company offering assurance, tax, transaction and advisory business services. Complainant operates on a worldwide basis via a network of more than 140 associated firms located in five geographic areas (Europe, Middle East, India and Africa; Americas; Far East; Japan and Oceania). 135,000 professionals work for Complainant.
Complainant owns trademark registrations in 142 countries or geographic regions worldwide (including in Costa Rica where Respondent is based) for trademarks that consist of or contain the mark ERNST & YOUNG or variations thereof (the “Trademark”). Complainant is the registrant of more than thousand domain names that consist of or contain the Trademark or variations thereof, including the domain name.
Respondent registered the Disputed Domain Name on February 29, 2000. Respondent has used the Disputed Domain Name in connection with a website which reproduces the textual and visual content contained on the official website operated by the Complainant on its own domain names (by using the same images, layout and text).
Complainant has sent two cease and desist letters to Respondent in August 2008, which have remained unanswered. 5. Parties' Contentions A. Complainant
Complainant first claims that the Disputed Domain Name is confusingly similar to Complainant's Trademark and that the only difference between the Trademark and the Disputed Domain Name which consists of the substitution of a dash in place of an ampersand is irrelevant for purposes of the Policy.
Complainant also contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant claims that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the Trademark in any manner. Respondent has further never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain. Rather, Respondent is making an illegitimate, commercial, unfair use of the Disputed Domain Name, with intent for commercial gain misleadingly to divert consumers. Specifically, Respondent is using the Disputed Domain Name in connection with a website that appears to be Complainant's own website, as Respondent's website includes the same images, same layout and same text used by Complainant on its own website.
Complainant finally claims that Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, Complainant, in violation of paragraph 4(b)(iii) of the Policy. Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website, in violation of paragraph 4(b)(iv) of the Policy. Complainant also claims that Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, and that Respondent would have engaged in a pattern of such conduct because it would have registered other domain names which appear to correspond to trademarks owned by third parties. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, complainant must prove each of the following:
(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 established that it is the owner of numerous trademark registrations containing the distinctive terms ERNST & YOUNG (i.e. the Trademark) in many jurisdictions, including Costa Rica where Respondent is based.
The Panel further notes that the Disputed Domain Name fully incorporates the Trademark and that the only change between them results from having replaced the ampersand by an hyphen. Such minor change cannot affect a finding of confusing similarity. See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728.
Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the Trademark in which Complainant has rights.
The Panel thus finds that Complainant has established that the condition of 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel accepts Complainant's uncontradicted submissions that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the Trademark in any manner and that Respondent has further never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain.
Based on Complainant's uncontradicted evidence, it further appears that Respondent has used the Disputed Domain Name and Complainant's Trademark to create the misleading impression that the website operated in connection with the Disputed Domain Name would be affiliated with Complainant, as a result of the fact that such website reproduces the textual and visual content of the official website operated by Complainant on its own domain names (by using the same images, layout and text).
On this basis, the Panel is of the opinion that such use cannot constitute a good faith use of the Disputed Domain Name.
As a result, the Panel finds that Complainant has established that the condition of 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the 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” (paragraph 4(b)(iv) of the Policy).
In this case, Complainant has duly established that Respondent has used Complainant's Trademark in the Disputed Domain Name for a website associated with the Disputed Domain Name which was graphically and textually identical to the official websites of Complainant. This use cannot be viewed in other way than an attempt by Respondent to attract Internet users to its website by creating a likelihood of confusion with Complainant's Trademark. This consequently falls within the scope of application of paragraph 4(b)(iv) of the Policy. This constitutes a bad faith use of the Disputed Domain Name.
The unauthorized reproduction of the content of the original webpages of Complainant is also a sign of the bad faith use of the Disputed Domain Name by Respondent. See, by analogy, Compiere Inc. v. Access, Denied,WIPO Case No. D2007-0131 (finding that the use and registration of the domain names to engage in, facilitate, or promote conduct that infringes upon the Complainant's copyrights (in addition to its trademarks) should not be allowed); TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216 (finding that an intentional infringement of the Complainant's copyright would in itself amount to use in bad faith); see also Educational Testing Service v. Domains by Proxy Inc. / Zhao Zhihui / Chen keqing,WIPO Case No. D2008-0993 (finding that the adoption of the Complainant's trade marks in the disputed domain names under which such copied content is accessible as confirming a finding of bad faith use).
Further, the Panel accepts the uncontradicted contention of Complainant that Respondent registered the Disputed Domain Name with full knowledge of Complainant's rights in the Trademark and that the registration of the Disputed Domain Name by Respondent was made in bad faith. Respondent's awareness of Complainant's Trademarks may be inferred from the substantial worldwide use of said trademarks across the world prior to the registration of the Disputed Domain Name. See, e.g., MasterCard International Incorporated v. Kelvin Mackole,WIPO Case No. D2008-0702.
As a result, the Panel finds that Complainant has proven that the condition of paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
Jacques de Werra
Sole Panelist
Dated: March 25, 2009
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