The Complainant is KPMG International Cooperative of Amstelveen, Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2017. On June 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2017. Thereafter, the Center received email communications from the Respondent on July 26, 2017 and July 28, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 31, 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 a Swiss entity headquartered in the Netherlands specialized in providing audit, tax and advisory services under the trademark KPMG through affiliated independent firms.
The Complainant is the owner of several trademark registrations amongst which is the Indian trademark Registration No. 1272669 for the word mark KPMG in class 35, covering auditing and taxation services, filed on March 16, 2004.
The disputed domain name is and was registered on December 30, 2015. The disputed domain name resolves to a partially constructed webpage advertising advisory services on consulting, audit, and taxes. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be one of the world’s leading providers of audit, tax and advisory services, being present in approximately 150 countries including India and counting over 189,000 employees.
The KPMG trademark enjoys, according to the Complainant, a strong reputation and is famous throughout the world, as recognized in previous UDRP decisions.
As to the disputed domain name, the Complainant asserts that it is identical to the distinctive and famous KPMG trademark combined with the geographical suffix India, which is insufficient to avoid any likelihood of confusion, not impacting the overall impression of the disputed domain name which is dominated by the Complainant’s trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent redirects Internet users to a webpage that purports to offer audit, tax and consulting services, the same categories of services supplied by the Complainant’s member firms;
(ii) the Respondent’s webpage appears to be a sham holding page, incomplete and with blank template wording;
(iii) the Respondent appears to own 326,353 other domain names, including some which also reproduce marks of the Complainant’s competitors such as , and has been named respondent in at least 32 other UDRP complaints;
(iv) there is no credible evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services and no credible legitimate basis on which the Respondent could use the disputed domain name for bona fide purposes;
(v) the Respondent has not been commonly known by the disputed domain name;
(vi) there is no credible evidence or no credible legitimate basis on which the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given the fame and reputation of the KPMG trademark well before the registration date of the disputed domain name. The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, and has engaged in a pattern of such conduct in relation to other famous brands. Furthermore, by using the disputed domain name the Respondent is intentionally attempting to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s famous trademark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
On July 26, 2017, after the Respondent’s default had been notified, the Center received an email communication from the disputed domain name’s administrative and technical contact (as listed in the WhoIs) stating that “We dont use it and we have already communicated this”.
This message reproduced a previous exchange of communications between the Registrar and the disputed domain name’s administrative and technical contact in which the latter stated that “[t]he vendor is agreeable to a settlement provided he is compensated. Please let me know what is the amount the other party is ready to offer.”
On July 28, 2017, the Center received an email communication from the disputed domain name’s administrative and technical contact, in which it stated, “we are acting only on behalf of our client and we do not seek any ‘compensation’. Further, we are taken back by the term ‘abusive’ used by the complainant. We neither use this website and nor we have time to enter into such email correspondence.” On the same date, the Center received a second email communication from the disputed domain name’s administrative and technical contact, in which it stated, “We also like to add that the client is happy to settle this amicably and relieve the domain name. Kindly correspond with them at [email address redacted]. We won’t be able to communicate on this matter.” 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the KPMG trademark, duly registered in various jurisdictions.
The Panel finds that the disputed domain name merely reproduces the Complainant’s mark with the addition of a geographical term which is insufficient to avoid confusing similarity and does not impact the overall impression of the disputed domain name, which is dominated by the Complainant’s trademark. The Complainant’s trademark is clearly recognizable in the disputed domain name.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the 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 the respondent has not acquired 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 Respondent’s use of the disputed domain name in connection with a webpage that purports to offer audit, tax and consulting services, the same categories of services supplied by the Complainant’s member firms cannot be considered a bona fide offering of goods or services since it is clearly targeting the Complainant’s clientele and prospective customers or creating a likelihood of confusion with the Complainant’s distinctive and famous trademark.
Other elements to consider are the sizeable domain name portfolio held by the Respondent counting well over 300,000 domain names, as well as its participation in dozens of previous UDRP proceedings in which panels have recognized its bad faith, which makes it even more difficult to conceive of any rights or legitimate interests the Respondent would have in holding domain names that reproduce in their entirety well-known trademarks and the disputed domain name, what further corroborate with the finding of lack of rights or legitimate interests in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In the present case, the Respondent’s use of the disputed domain name in connection with a webpage that purports to offer audit, tax and consulting services, the same categories of services supplied by the Complainant’s member firms, characterizes bad faith in the registration and use of the disputed domain name since it indicates knowledge of the services rendered by the Complainant and the intention of attempting to attract, for commercial gain Internet users to the disputed domain name, by creating a likelihood of confusion with the trademark.
The following circumstances further corroborate the Panel’s finding of bad faith registration and use of the disputed domain name:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and
(iii) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties’ well-known trademarks.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 14, 2017
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