Complainant is Stichting BDO of Eindhoven, the Netherlands, represented by Hogan Lovells International LLP, France.
Respondent is Jonathan Dean, BDO of Keller, Virginia, United States of America ("US"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on May 13, 2014.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 4, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on June 13, 2014. 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 Registrar, the Domain Name was registered on August 3, 2012. 5. Parties' Contentions A. Complainant
Complainant states that it is the registered proprietor of 218 trade mark registrations and 42 trade mark applications in 173 territories for various BDO marks. It has granted its sub-licensor BDO IP Limited, a fully owned subsidiary of Complainant, the right to grant sub-licences to use the BDO mark to all firms who are members of BDO International Limited, a United Kingdom ("UK") company limited by guarantee ("BDO Member Firms"). The BDO Member Firms are independent firms that provide professional services under the BDO brand, have the BDO acronym in their legal name unless such is not permitted by local law, and form an international network ("BDO Network").
Complainant further states that the BDO Network is an internationally renowned network of public accounting firms that goes back to 1963, and currently has over 55,000 staff members in 1,264 offices in 144 countries around the world, including in Europe, Africa and the Middle East, North and South America, and Asia. Since its creation, the term BDO has acquired and constantly developed considerable goodwill and notoriety in connection with a wide range of services within the financial services industry including audit, tax and advisory services across the following sectors: banking, capital markets, insurance, and asset management. Complainant contends that it sub-licensees have been consistently ranked amongst the top accounting firms in the US and in the world, with USD 683 million in revenue in the US alone and over USD 6 billion in revenues combined (for all BDO member firms).
Complainant states that the BDO brand distinguishes the BDO Network of public accounting firms around the world and it is placed before each BDO Member Firm's name, unless such is not allowed under local law. As a result Complainant's BDO brand has acquired and developed a strong reputation for the level of quality of its services, throughout the past 50 years.
Complainant advises that it and the BDO Member Firms own numerous gTLD domain names consisting of the term BDO, including the domain name , registered in 1995, and , as well as, to name a few, the following ccTLD domain names: (Australia), (Austria), (Belgium), (Canada), (France), (Germany), (Hong Kong), (Israel), (Italy), (Morocco), (Switzerland) and (United Kingdom).
Complainant contends that it and its BDO Member Firms have made substantial investments to develop a strong presence online by being active on the different social media forums available, including Facebook, Linkedln, Twitter and YouTube, through dedicated BDO pages. In addition to its strong international reputation, Complainant has secured ownership of numerous trade mark rights in the term "BDO" in connection with financial services in many jurisdictions throughout the world.
Complainant stresses that the value and integrity of its BDO trade mark used in connection with financial services is vital to the success, integrity and protection of the business of Complainant's sub-licensees, the BDO Member Firms. Accordingly, Complainant devotes significant resources to protecting its BDO brand in forums such as this administrative proceeding.
Complainant notes that the Domain Name was registered by Respondent on August 3, 2012 using a privacy protection service and until February 13, 2014 the Domain Name was pointing to a website displaying Complainant's distinctive BDO trade mark in conjunction with "asset managers" and purportedly offering identical or similar services to those of Complainant, including personal banking, insurance, investments and asset management.
Complainant contends that there were numerous indications on the website associated with the Domain Name that suggested Respondent was using the Domain Name to facilitate illegal and fraudulent activity, including phishing, identity theft and other abusive behaviour, by holding himself out to be a legitimate banking institution affiliated to or sponsored by Complainant.
In August 2012, Complainant was alerted to the existence of the Domain Name because Respondent was using a related email address "[…]@" to contact current and potential customers as part of an alleged internet scam. Complainant points out that in each case, it was only made aware of the emails because one of the recipients contacted BDO to enquire whether the email was genuine. In particular one email describes the "International Offshore Account Opening Procedure", lists the types of accounts available and the minimum deposits required, which Complainant alleges is an indication of a sophisticated attempt to defraud.
On August 30, 2012, the BDO Member Firm in the UK sent a letter to Respondent requesting him to cease and desist from using the Domain Name and any other reference to the BDO trade mark in connection with any marketing literature, including but without limitation to websites, email addresses, letterheads, faxes and any other communication, whether electronic or hard copy.
On September 8, 2012, Respondent replied (referring to himself as "Curtis") stating the following: "I do not have any intention of making this mistake, i am just a student in collection of our departmental dues, the BDO stands for Buddies determined Orienttion (sic), please forgive us, please we are sorry."
On October 4, 2012, Complainant's sub-licensee in the UK replied to the above reasserting its trade mark rights in the name BDO in connection with financial services. Respondent was requested to cease and desist from using the Domain Name and any other reference to Complainant's BDO trade mark in connection with any marketing literature, including but without limitation to websites, email addresses, letterheads, faxes and any other communication, whether electronic or hard copy. Respondent did not reply to the above letter.
In January 2014, a current customer contacted the BDO Member Firm in the UK asking to verify whether the website available at "www./bdo/index.html" was valid or fake and whether a so-called "Curtis Bloomsfield" was an employee.
On February 13, 2014, Complainant's lawyers sent a Notification of Abuse to the Hosting Provider of the website associated with the Domain Name notifying them of the illegal and fraudulent activity facilitated by the website, and requesting that the website associated with the Domain Name be taken down immediately.
On February 14, 2014, the Hosting Provider notified Complainant's lawyers that it had suspended the hosting services for the website associated with the Domain Name. Also on February 13, 2014, Complainant's lawyers submitted a request to the privacy protection service provider, Privacy P, to disclose the details of the holder of the Domain Name so that Complainant would be able to seek immediate legal action against him. On February 14, 2014, the privacy protection provider disabled its services for the Domain Name and disclosed the contact details of the domain name holder, Respondent.
Complainant submits that given the abusive nature of the use of the Domain Name, it is clear that Respondent has registered the Domain Name for fraudulent purposes.
Complainant submits that the Domain Name is identical or confusingly similar to its BDO trade mark, in that the Domain Name incorporates in its entirety Complainant's BDO trade mark with the addition of the generic terms "asset" and "managers". In addition, Complainant submits that the generic terms "asset" and "managers" are not sufficiently distinctive to distinguish the Domain Name from Complainant's trade mark but actually reinforces the confusing similarity with Complainant's BDO trade mark, given that "asset management" refers to the services for which Complainant's trade marks have been registered.
Complainant argues that Respondent cannot assert that he is using the Domain Name in connection with a bona fide offering of goods or services as Respondent was using the Domain Name to point to a website that was designed to deceive internet users into believing that it was affiliated to or sponsored by Complainant for fraudulent purposes.
Complainant contends that Respondent's assertion that BDO stands for "Buddies determined Orientation" has no credibility and the fact that Respondent deliberately chose to conceal his identity by means of a privacy protection service is another strong indication of Respondent's bad faith and an intent to use the Domain Name in a way which may be abusive or otherwise detrimental to Complainant and its rights. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Identical or Confusingly Similar
Complainant is the registered proprietor of a large number of trade mark registrations and applicant of a large number of trade mark applications in 173 territories around the world, for various BDO marks. Complainant, through its licensing network, is ranked amongst the top accounting firms in the United States of America and in worldwide in terms has a multi-billion-dollar revenue business.
Complainant has a presence in 144 countries around the world, and provides a range of financial services including audit, tax and advisory services across the banking, capital markets, insurance and asset management sectors. As a result, the Panel has no difficulty in concluding that Complainant is justified in relying on Complainant's BDO brand (the "BDO Trade Mark") as providing rights and further having acquired a strong reputation for the level of quality of its services, throughout the past 50 years. None of this is disputed by Respondent.
The Domain Name contains the identical but distinctive element BDO, accompanied by the descriptor "asset management", such term being directly descriptive of one of Complainant's core services or alternatively one of the key sectors in which it operates. Accordingly, the Panel finds that the BDO Trade Mark and the Domain Name are confusingly similar B. Rights or Legitimate Interests
In terms of assessing whether Respondent has rights or legitimate interests in the Domain Name it is necessary to examine Respondent's purported justification for registering and using the Domain Name, particularly given Complainant's reputation in and long-standing use of the BDO Trade Mark.
Respondent has not filed a response. Accordingly, it is difficult to identify why Respondent chose the Domain Name and what his explanation for using it might be. Complainant alleges that the Respondent is known by the name "Curtis" and uses the e-mail address . Complainant further alleges that on September 8, 2012, Respondent contacted Complainant and stated that he was a student and that BDO stands for "Buddies determined Orienttion" (sic)
Respondent has chosen to not share the reason he chose the Domain Name. It might be acceptable to use the descriptive term "asset management", assuming Respondent provides such services. Instead, Complainant asserts that Respondent is involved in a range of misleading activities and scams and is not involved in the provision of asset management services at all.
Even if Respondent is given the benefit of the doubt in terms of the term "asset management" the letters BDO appear to be relatively distinctive and on the basis of evidence and submissions presented in this matter to have no well known meaning, other than as a designation of Complainant and its licensed network. Accordingly, while Respondent might be excused for using a descriptive term in the Domain Name, the same does not apply to use of the well known BDO Trade Mark incorporated into the Domain Name.
In addition, in the absence of any suitable explanation the inference is drawn that the phrase "Buddies determined Orienttion" is a concoction designed to give legitimacy to the choice of the Domain Name.
This is inconsistent with rights or legitimate interests.
On this basis the Panel finds that the ground is made out. C. Registered and Used in Bad Faith
A finding of bad faith may be made whether the Respondent knew or ought to have known of the registration and use of the trade mark prior to registering the Domain Name. The Panel considers that it is most unlikely that Respondent did not know of Complainant and the BDO Trade Mark when he registered the Domain Name.
Given the findings above that the Domain Name is confusingly similar to the BDO Trade Mark; and given the inference that Respondent concocted a name to try and justify his fraudulent actions, and finally drawing the inference that Respondent had the requisite knowledge, the Panel finds that the Domain Name was registered and used in bad faith. 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 Complainant.
Clive L. Elliott QC
Sole Panelist
Date: June 23, 2014
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