The Complainant is Deloitte Touche Tohmatsu of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”).
The Respondent is Park KyungSuk of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Go China Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On January 28, 2016, the Complainant submitted by email to the Center an amendment to the Complaint. On January 29, 2016, prior to the commencement of the proceedings, the Center received an email communication from the Respondent asking that the Mutual Jurisdiction be that of its location.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. The Respondent did not submit any additional response. On February 22, 2016, the Center informed the Parties that it would proceed to the commencement of the Panel appointment process.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 1, 2016. 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. Procedural Aspect - Mutual Jurisdiction
Pursuant to the Rules, paragraph 3(b)(xiii), “the complaint shall state that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.”
Mutual Jurisdiction is defined in the UDRP Rules as a court jurisdiction at the location of either (a) the principal office of the Registrar (provided that the domain name registrant has submitted in the registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name registrant's address as shown for the registration of the domain name in the concerned registrar's WhoIs database at the time the Complaint is submitted to a dispute resolution service provider.
According to Exhibit C of the Complaint, which contains the relevant registration agreement for the disputed domain name, the Respondent has submitted in its registration agreement to the jurisdiction of the courts of (1) its domicile and (2) where the Registrar is located.
In the present case, the Complainant has submitted in its amended Complaint that the Mutual Jurisdiction be that of the Registrar’s location, which is Arizona, United States.
The applicable Mutual Jurisdiction in this case would therefore be the jurisdiction of the courts where the Registrar was located at the time of filing the Complaint, which is Arizona, United States. 5. Factual Background
The Complainant is the owner of many registered trademarks for DELOITTE and DELOITTE & TOUCHE in various jurisdictions worldwide, such as the following:
- the International trademark No. 0825782 of February 12, 2004 for the word DELOITTE covering goods and services in classes 09, 35, 36, 42; and
- the Korean trademark No. 4500033800000 of July 16, 2001 for DELOITTE & TOUCHE covering goods and services in classes 09, 35, 36, 42
The Complainant has licensed the DELOITTE trademark to its network of independent member firms that provide audit, consulting, financial advisory, risk management and tax services to its clients around the world. According to its assertions, the Complainant and its member firms employ more than 200,000 people in over 150 countries including Republic of Korea where the Respondent apparently resides. In the fiscal year 2015, the Complainant’s member firms attained aggregate revenues of over USD 35 billion.
The Complainant has been a successful complainant in past proceedings under the UDRP relating to domain names incorporating its trademark, and past panels have recognized that the Complainant’s DELOITTE mark has been “used extensively by Complainant and its worldwide member firms since at least 1989”: Deloitte Touche Tohmatsu v. Moniker Privacy Services / Dan Booker, Total Net Solutions,WIPO Case No. D2008-1489.
The disputed domain name was registered on January 13, 2010 and at the time of the filing of the Complaint it was used for a parking website providing also sponsored links to the Complainant’s competitors. The Complainant has tried to contact the Respondent before commencing these proceedings in order to obtain the transfer of the disputed domain name amicably. However, the Complainant received no reaction. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark and trade name DELOITTE, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the DELOITTE trademark. The dominant part of the disputed domain name incorporates the Complainant’s trademark in its entirety. In addition to this, the disputed domain name contains the generic term “my”.
Numerous UDRP panels have considered that the addition of generic wording to trademarks in a domain name is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the domain name as being connected to a complainant’s trademark. See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level Domains (e.g., “.com”, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark DELOITTE, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. In line with previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, at the time the Complaint was filed, the Respondent was using the disputed domain name in connection to a parking website displaying sponsored links for promoting services competing with those offered by the Complainant and its member firms. The pay-per-click website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (See also Shon Harris v. c/o Whois Identity Shield,WIPO Case No. D2007-0997 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Also at the time of filing the Complaint, on the website corresponding to the disputed domain name, the disputed domain name was offered for sale. Such form of use of a domain name comprising a third party’s trademark does not constitute a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for DELOITTE worldwide including in the Republic of Korea since 1999, where the Respondent is apparently located.
The disputed domain name was registered in 2010 and incorporates the DELOITTE trademark and the generic non-distinctive term “my”.
Further, previous UDRP panels have found that the Complainant’s trademark DELOITTE is internationally well known, see for example, Deloitte Touche Tohmatsu v. Supervision Audio Video Inc Search-U,WIPO Case No. D2011-0187; Deloitte Touche Tohmatsu v. H3B,WIPO Case No. D2011-0181; Deloitte Touche Tohmatsu v. Open Water Enterprises Limited, Louise S.,WIPO Case No. D2008-1632; or Deloitte Touche Tohmatsu v. CostNet aka Domain Manager,WIPO Case No. D2003-0619.
At the time of filing the Complaint the disputed domain name resolved to a parking page providing links to websites of firms that directly compete with the Complainant and its member firms. In the present proceeding it may reasonably be inferred that the Respondent has not set up this redirection system without the expectation of some financial gain, and is operating the well known pay-per-click or click-through device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them. These facts support the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself via confusion with the Complainant’s mark is for the Respondent’s own commercial gain, at the same time being likely to damage the Complainant’s business and reputation. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent also offers the disputed domain name for sale for the amount of EUR 4,800, an amount which would appear to be far in excess of what the Respondent actually paid to register the disputed domain name.
Therefore, the Panel finds that this is a classic case of cybersquatting: the Respondent was well aware of the Complainant’s DELOITTE trademark and the corresponding services and thus registered the disputed domain name and uses the same in bad faith, to attract Internet users by creating a likelihood of confusion with the Complainant’s mark for Respondent’s commercial gain and potentially to profit from the resale of the disputed domain name for an amount that exceeds the acquisition of the disputed domain name to the Complainant or a third party.
Also, the Respondent did not respond to the Complaint nor to the Complainant’s letter sent prior to commencing the present proceeding. Furthermore, it appears that the postal contact details provided to the Registrar are false since the hard copy notification documents for this case were undeliverable to the Respondent due to an apparently fake address. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: March 14, 2016
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