The Complainant is Grant Thornton International Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Mishcon de Reya Solicitors, United Kingdom.
The Respondent is Petrova Elena Olegovna of Moscow, Russian Federation. 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 8, 2017. On May 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2017.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 23, 2017. 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
The Complainant is the umbrella entity of a professional services networks of independent accounting and consulting firms providing, amongst others, accounting, tax, auditing, outsourcing and business risk advise, active in over 130 countries.
The Complainant, as shown by the evidence submitted, is the owner of a number of trade mark registrations, which include a registration of the word mark GRANT THORNTON in the United Kingdom (No. 00002477147 registered as of July 4, 2008), two Russian registrations of the word mark GRANT THORNTON (including No. 216232 registered as of January 16, 2001) as well as an European Union trade mark registration of the word mark GRANT THORNTON (No. 006590962 registered as of January 14, 2009) in the countries of the European Union, hereafter together referred to as the “Trade Marks”.
The Domain Name was registered by the Respondent on March 20, 2017. The Domain Name resolves to a website purporting to be providing services under the name “Grant Thornton World”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to the Trade Marks, as it incorporates the dominant element “Thornton” of the Trade Marks. The addition of the word “world” creates the impression of a global brand or company associated with the word “Thornton”. The website of the Respondent also uses the words “Grant Thornton World” and the Complainant’s address in Australia.
The Complainant points out that the Respondent does not have a registered trade mark “Thornton” in its name and that, given the reputation and distinctiveness of the Trade Marks, there would be no conceivable basis upon which the Respondent could legitimately register or use the Domain Name. The Complainant also submits that it has written a letter to the Respondent on March 30, 2017 to note its rights and legitimate interests in the Domain Name, to which no response was received.
The Complainant further states that the Respondent has registered the Domain Name primarily for the purpose of disrupting its business as it resolves to a website where services are offered under the name “Grant Thornton World”. The Complainant also brings forward, as evidence of bad faith use, that it has received phone calls, emails and visits from persons who had received job offers through the email address “Grant Thornton World”>[…]@”, inquiring whether the offer came from the Complainant. This shows, according to the Complainant, that the Respondent was thereby intentionally attempting to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or of a product or service at its location. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the distinctive element “Thornton” in its entirety. The addition of the word “world” does not avoid the confusing similarity between the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.8). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, paragraph 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 3.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name in the present case, also taking into account the repeated use on the website to which the Domain Name resolves of the name “Grant Thornton World” and the use of the Complainant’s contact information in Australia, does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Respondent has not come forward with any rebuttal to the Complainant’s evidence and assertions in this regard.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred 16 years after the registration of the earliest of the Trade Marks;
- the element “Thornton” of the Trade Marks, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks; and
- the Respondent uses the words “Grant Thornton World” on the website to which the Domain Name resolves.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain Name resolves to a website where the words “Grant Thornton World” are used repeatedly and the fact that the website contains the Complainant’s contact information in Australia, are indications that the Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, and of the services offered there, within the meaning of paragraph 4(b)(iv) of the Policy.
In addition, the Panel finds that the following circumstances are also indicative of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
the non-dictionary nature of the element “Thornton” incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;
- the lack of a Response of the Respondent;
Evidence of what may be a fraudulent email scheme using fictitious job offers to solicit information using an email address incorporating the Trade Marks
Therefore, the Panel concludes that the Domain Name has been registered and is being 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 disputed domain name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: July 10, 2017
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