The Complainant is Stichting Bdo of Eindhoven, Netherlands represented by Abelman Frayne & Schwab, United States of America (“U.S.”).
The Respondents are Face off Group, LLC of Greenwich, Connecticut, U.S. and Pat Noonan/ Patrick Noonan of San Francisco, California, U.S. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On July 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2012 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 amendment to the Complaint on July 5, 2012.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on July 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2012. The Respondent Patrick Noonan submitted an informal communication on August 1, 2012. The Respondent Face off Group, LLC communicated with the Center on July 9, 16, 18, and August 8, 2012. Neither Respondent addressed any issue material to the decision in their communications.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 7, 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.
The language of this administrative proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainants operate a business with reported income of USD 5.6 billion in 2011 and employed approximately 50,000 staff in 1,100 offices in 135 countries under brands including the following:
A. BDO: the Complainant is the owner of several trademarks consisting of, or including the word “bdo”, in respect of accountancy and financial consulting services, fiscal matters and real estate appraisal, including International Registration No. 770374 dated October 30, 2001 and U.S. No. 76353081 dating from March 25, 2003. They own the registration for the domain name and operate a website relating to its business at this domain name.
B. BDO INTERNATIONAL: the Complainant is the owner of several trademarks consisting of, or including the words “bdo international”, in respect of accounting and financial consulting services, fiscal matters and real estate appraisal, including International Registration No. 771353 dated October 30, 2001 and U.S. registration No. 2699804 dating from March 25, 2003. They own the registration for the domain name and operate a website relating to its business at that domain name.
The Respondents registered the Disputed Domain Names , , , , , , , and as follows:
- on September 24, 2009
- on March 19, 2009
- on July 22, 2009
- on July 22, 2009
- on January 26, 2009
- on May 20, 2009
- on May 12, 2009
-
The Respondents’ initial use of the Disputed Domain Names following registration was to redirect traffic to a parking page bearing the BDO logo. Subsequently, the Disputed Domain Names were used to redirect Internet traffic to the website of the Complainant’s competitor Grant Thornton, LLP. The use subsequent to that was to direct Internet traffic to an inactive webpage bearing an error message. 5. Parties’ Contentions A. Complainant
The Complainant cites its registrations of the trademarks BDO and BDO INTERNATIONAL in various countries, and related marks consisting of, or including these words, as prima facie evidence of ownership.
The Complainant submits that each of its trademarks is distinctive and well-known (citing A, Inc. v. Sung Hee Cho,WIPO Case No. D2001-1276) and that its rights in that mark predate the Respondents’ registration of the Disputed Domain Names , , , , , , , and . It submits that the Disputed Domain Names are confusingly similar to its trademarks, because each of the Disputed Domain Names incorporates in its entirety the BDO trademark (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of variants of the word “valuation” (citing United Features Syndicate Inc. v. All Business Matters, Inc. (aka All Business M) and Dave Evans,WIPO Case No. D2000-1199).
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names because the Respondents have no trademark rights in or license to use the mark BDO.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainants contend that “given the famous and distinctive nature of the BDO marks as well as the Respondents’ actions, it is clear that the Respondents have both constructive and actual notice of the existence of the Complainant’s BDO marks and that the Disputed Domain Names were registered “to trade off the goodwill and reputation of the Complainant.” On the issue of use, the Complainant contends that the Respondents’ use of the Disputed Domain Names to extract a monetary settlement amounts to “opportunistic bad faith” (citing Expedia Inc. v. European Travel Network,WIPO Case No. D2000-0137, Veuve Clicquot Ponsardin, Maison Fondée en 1722 v. The Ploygenix Group Co.,WIPO Case No. D2000-0163, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). B. Respondent
The Respondents did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
There are two preliminary points to determine. These are: whether the Complainants may file a single Complaint where there are multiple Disputed Domain Names and identifying the proper Respondents or Respondent. Following determination of these, under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires 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”.
If a respondent does not submit a response, in the absence of exceptional circumstances, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a response), as the panel considers appropriate. A. Preliminary Issues
The Policy and the Rules make express provision permitting consolidation of multiple domain names. Under Rules, paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case, the Disputed Domain Names have all been registered by the same registrant as confirmed by the registrar, and as properly named by the Complainant in its amended Complaint. The Panel finds that the Complainant has properly brought this Complaint against the Respondents concerning the Disputed Domain Names.
The Panel shall now turn to the substantive elements under the Policy. B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks BDO and BDO INTERNATIONAL in the U.S. and in many countries throughout the world. In any event, the domain name registration may be assessed under the first element of the Policy by comparing it to a trademark registered in any country. (See Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the marks BDO and BDO INTERNATIONAL.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the BDO trademarks, the Panel observes that the Disputed Domain Names respectively comprise (a) an exact reproduction of the Complainant’s trademark BDO (b) followed by the word “valuation” or variations of it; and (c) in some cases also followed by the work “advisors” or variations of it; and (d) in all cases followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded for purposes of paragraph 4(a)(i) of the Policy (See Accor v. Noldc Inc.,WIPO Case No. D2005-0016). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: “bdova”, “bdoval”, “bdovaluationadvisors”, “bdovaluationadvisory”, “bdovaluation”, “bdovaluationllc”, “bdovaluations” and “bdovaluationservices”.
Having regard to the addition of the word “valuation” and variations of it at the end of each domain name, the Panel is satisfied that Internet users would understand the word “valuation” to connote the act of appraising an asset for the purpose of estimating and advising on its financial value and that a contraction or variation of that word would nevertheless have the same contextual meaning. The word “advisory” when used as a verb, means to give advice. These words whether alone or in combination are descriptive of a financial industry related service, neutral and do not dispel the confusing similarity of the Disputed Domain Names with the Complainant’s mark BDO. It is well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive words such as, in this case, “valuation”, “advisory” and variations thereof: (see Zurich Insurance Company v. Multiweb Media Corporation and Mwebmedia,WIPO Case No. D2002-0989; Unilever PLC v. ABC Corp,WIPO Case No. D2003-0164; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The confusion is compounded because the term is descriptive of the goods or services marketed by the Complainant in relation to the trademarks. The Panel finds that a valuation service is plainly ancillary and related to the advisory, financial and real estate asset assessment services provided by the Complainant.
In considering the first element of paragraph 4(a) of the Policy, the contents of a website which is the direct manifestation of the potential uses of the domain name, and the respondent’s intentions are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the UDRP panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. This Panel finds that the Disputed Domain Names are therefore confusingly similar to the BDO trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on a complainant to establish the absence of the respondents’ rights or legitimate interests in the disputed domain names. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names because each of them is misleadingly directing Internet users to a parking page bearing the BDO logo; subsequently, the Disputed Domain Names were used to redirect Internet traffic to the website of a BDO competitor Grant Thornton, LLC; the use subsequent to that was to direct Internet traffic to an inactive webpage bearing an error message. The Complainant asserts also that it has not licensed, permitted or authorized the Respondents to use the Complainant’s trademarks. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to websites of the nature outlined.
This conduct is compounded by the Respondents’ advertising of services that were either those of the Complainant or directly competing with the Complainant’s through the same website. In ACCOR v. Nick V, ActionStudio,WIPO Case No. D2008-0644, the UDRP panel found that a disputed domain name which resolved to a webpage displaying goods or services in the same field of activities as the complainant “cannot be considered a bona fide offering of goods or services.”
In the absence of a Response, the Panel finds for the Complainant on the second element of the Policy. D. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both. “b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), 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, (relevantly):
(ii) 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) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.”
The evidence that the Respondents registered and have used the Disputed Domain Names in bad faith is overwhelming in the view of the Panel. The onus is on the Respondents to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The volume of names registered by the Respondents, the unlikelihood that registering eight domain names containing the Complainant’s trademarks over seven months was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondents were registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, Webreg,WIPO Case No. D2006-0964; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Panel finds the trademarks BDO and BDO INTERNATIONAL are so widely known in the fields of accounting and financial consulting services, fiscal matters and real estate appraisal, that it is inconceivable that the Respondents might have registered these marks without knowing of them. In this Panel’s view, the Respondents’ conduct in registering the Disputed Domain Names with the additional words describing services in the same financial services sector as the Complainant indicates prior knowledge of the Complainant’s trademark rights and warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel found that a claim that the domain name at issue, , could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible). It beggars belief that the Respondents were not fully aware of the significance of the letters “BDO”.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondents’ use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondents have used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
In Accor v. This Domain May be for Sale or Lease,WIPO Case No. D2008-0420, the panel stated: “The case file contains printouts of pages from the websites associated with the domain names at issue here. These so-called ‘parked’ domain name sites contained as of the date of these printouts May 9, 2008 listings and links to (a business) competing with those of the Complainant. This amounts to ‘steering’ unsuspecting Internet visitors to competing services taking advantage of the confusion created by the similarity of the domain names to Complainant’s trademarks — the very essence of bad faith use under the UDRP.” The Complainant’s evidence is that the Respondents followed this up by seeking monetary compensation for the transfer of the Disputed Domain Names to the Complainant in an amount well in excess of the usual out-of-pocket expenses that would otherwise have applied to the Disputed Domain Names.
This Panel finds that the Respondents must have been aware of the relevant trademarks. This Panel finds that the Respondents has taken the Complainant’s trademark BDO and incorporated the mark in the Disputed Domain Names without the Complainant’s consent or authorization, solely for the purpose of selling them for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Disputed Domain Names , , , , , , , and be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: August 21, 2012
Full & Egal Universal Law Academy