The Complainant is KPMG International Cooperative of Amstelveen, the Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dave Rosenbom James of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (“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 May 22, 2012. On May 23, 2012, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On May 25, 2012, Moniker Online Services, LLC. 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 May 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 27, 2012. 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
KPMG is a network of independent firms that provide audit, tax and advisory services under the KPMG brand. KPMG is a leading global accountancy firm, having consistently been ranked as one of the “Big Four” accounting firms. KPMG arose from the merger between Peat Marwick International and Klynveld Main Goerdeler in 1987. KPMG currently operates in 153 countries and has over 145,000 employees. This includes a KPMG office in Antigua and a KPMG office specially serving Gibraltar, the location of the Respondent.
The Complainant is the body to which all KPMG member firms affiliate with and serves as the coordinating entity for the member firms. KPMG member firms are granted a non-exclusive licence from the Complainant to use the KPMG brand. The KPMG member firms and the Complainant are collectively responsible for maintaining and protecting the KPMG brand.
The Complainant has held a trade mark registration for the acronym KPMG (the “KPMG Mark”) since at least 2000. It owns at least 900 trademark registrations worldwide containing the name KPMG, including registrations in Antigua and Barbuda and Community Trade Mark registrations which cover Gibraltar.
The Domain Name was created on July 15, 2008. It currently revolves to an Internet site (“Respondent’s Website”) that reproduces the KPMG mark, the KPMG logo (the KPMG Mark combined with four blue boxes) and refers to an entity known as “KPMG Peat Marwick”, operating in Antigua. The Respondent’s Website provides a selection of information relating to investing in Antigua, and links to sites offering online blackjack and online casinos. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s KPMG Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the KPMG Mark. It owns at least 900 trademark registrations worldwide containing the acronym “KPMG”, including registrations of the KPMG Mark in Antigua and Barbuda and the European Union. Since the creation of KPMG in 1987, the Complainant and the KPMG member firms have engaged in extensive marketing and use of the KPMG Mark globally, ensuring that the Complainant has acquired substantial goodwill in the KPMG Mark.
The Domain Name consists of the KPMG Mark in its entirety with the addition of the geographical term “antigua”. The addition “antigua” should be disregarded because it refers to the geographical location Antigua. The Domain Name will confuse Internet users into believing that the Respondent is somehow connected with KPMG’s operations in Antigua. The Domain Name is confusingly similar to the KPMG Mark.
There is no legitimate interest held by the Respondent in respect of to the Domain Name. The Respondent’s name does not have any relation to the Domain Name, nor does the Respondent have any authorization from the Complainant to register the domain name. The Respondent’s Website fraudulently misrepresents itself as being a genuine KPMG website. The Respondent’s Website makes several references to KPMG’s office in Antigua and features the distinctive KPMG logo (the KPMG Mark combined with four blue boxes). For that reason the Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate non-commercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that fraudulently misrepresents itself as being a genuine KPMG website. The WhoIs data for the Domain Name states that the Domain Name “may be for sale” and invites bid offers “of USD 2,500 or more”. Moreover the Respondent’s Website purports to offer a range of accounting services, in direct competition with the Complainant, as well as links to other websites, such as online casinos and sites offering guitar lessons, for which the Respondent may receive advertising revenue. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the KPMG Mark, having registrations for the acronym KPMG as a trade mark throughout the world including in the European Union, where the Respondent is based and Antigua and Barbuda, where the Respondent’s Website purports to offer services.
The Domain Name consists of the KPMG Mark and the suffix “antigua”. Antigua is a geographical term referring to an island in the Caribbean, one of the two islands that make up the nation of Antigua and Barbuda. The addition of a geographical term to a trade mark is not sufficient under the circumstances to provide any distinctiveness to the Domain Name – see Carlsberg A/S v. Personal decohouse decohouse,WIPO Case No. D2011-0972; BP p.l.c.v. Kang-Sungkun Portraits Production,WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad,WIPO Case No. D2001-1493).
The addition of the suffix “antigua" to the KPMG Mark merely suggests to this Panel that the Domain Name refers to the Complainant or KPMG member firms’ activities in the island of Antigua. The suffix “antigua” does not distinguish the Domain Name from the KPMG Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s KPMG Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the KPMG Mark or a mark similar to the KPMG Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use. Rather it appears that the Respondent is using the Domain Name to operate a website that:
(a) offers accounting services under the KPMG Mark, in competition with the Complainant and/or the KPMG member firms and with direct reference to the KPMG office in Antigua; and
(b) contains a series of links to third party sites that offer online gambling, online casinos and guitar lessons, from which the Respondent is likely to receive some revenue.
Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the KPMG Mark at the time the Domain Name was registered. The KPMG Mark has been extensively used and promoted by the Complainant both in the EU and internationally since 1987. Furthermore, the Respondent’s Website reproduces the KPMG Mark, the KPMG logo and some of the details of KPMG’s office in Antigua. In addition, the Respondent’s Website purports to offer accountancy services, the primary service offered by the Complainant and the KPMG member firms. The registration of the Domain Name in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith to this Panel.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website offers services in direct competition with the Complainant by reference to the KPMG Mark. The Respondent’s Website also contains a series of links to third party sites such as online casinos. Such sites generally advertise by paying on a pay-per-click basis for Internet users redirected to their sites meaning that the Respondent would receive a financial reward for every Internet user redirected from the Respondent’s Website to those third-party sites. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: July 11, 2012
Full & Egal Universal Law Academy