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 Jacques Maginot de Les Paroches, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2018, 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.
On April 18, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 April 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 30, 2018. 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 an association of firms providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names “Deloitte Touche Tohmatsu” and “Deloitte & Touche”. These names are frequently shortened to “Deloitte”. The Complainant’s member firms constitute one of the “big 4” international accountancy practices, employ more than 264,000 people in over 150 countries and attained total annual revenues of USD 38 billion in 2017.
The Complainant is the owner of the DELOITTE trademarks across many countries (trademarks consisting of or containing DELOITTE), and possesses a numerous trademark registrations, some of dating back to 1989. These registrations include:
- United States trademark with registration No. 3002108 registered on September 27, 2005 in International Classes 9, 35, 36 and 42;
- United States trademark with registration No. 2052869 registered on April 15, 1997 in International Classes 9;
- United States trademark with registration No. 1602793 registered on June 19, 1990 in International Classes 36;
- European Union trademark with registration No. 3594736 registered on June 2, 2005 in International Classes 9, 35, 36 and 42;
- European Union trademark with registration No. 254094 registered on September 6, 1999 in International Classes 9, 35, 36 and 42;
- International trademark with registration No. 1198638 registered on December 30, 2013 in International Classes 16 and 41;
- International trademark with registration No. 612137 registered on September 24, 1993 in International Classes 35, 36, 41 and 42;
Additionally, the Complainant maintains an Internet website at the domain name where visitors may consult and use a technology platform for country specific websites around the world, including the site of its French and Italian member firm, and said domain name has been in use since 1995.
The disputed domain name was registered on March 15, 2018, well after the Complainant secured rights to the trademarks. According to evidence provided by the Complainant, the disputed domain name and the email server associated with that disputed domain name, have been used in connection with the fraudulent conduct of impersonating the Complainant. Fraudulent emails impersonating an employee have been sent asking the transfer of funds to a bank account in order to try to obtain fraudulent monetary gain. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
Relying on Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle,WIPO Case No. D2005-1105, the Complainant contends that by incorporating the Complainant’s DELOITTE trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant furthers claims that the mere addition of the generic term “lawyer” does not distinguish the disputed domain name from the DELOITTE trademark as it is related to the Complainant’s services.
Finally, in referring to the earlier decision Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723, the Complainant submits that the inclusion of the generic Top-Level Domain (“gTLD”) is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in DELOITTE and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In particular, it is proved that the registration of the contested Domain Name occurred after the Complainant’s DELOITTE trademark had been used extensively in numerous jurisdictions, and after the Complainant had secured registrations for DELOITTE trademark in countries around the world. As a consequence, it is predictable that the Respondent clearly was on actual, or at a minimum constructive, notice of the Complainant’s rights before it adopted the disputed domain name incorporating the Complainant’s DELOITTE trademark.
Additionally, the Complainant has never authorized, licensed or any way permitted the Respondent to register and use the disputed domain name. Nor does the Respondent have a relationship with the Complainant.
The Respondent does not appear to have used the disputed domain name for any legitimate purpose. The Complainant states that the Respondent’s only use of the disputed domain name and associated email server is to create fraudulent email addresses impersonating the Complainant. Such use constitutes a scam seeking to swindle a reputable business and does not demonstrate a legitimate interest.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that, at the time of registration of the disputed domain name, given the well-known character and international reputation of the DELOITTE trademark, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s trademark and was therefore in bad faith when registering the disputed domain name. According to the Complainant, the mere fact that Respondent registered the disputed domain name without authorization further indicates bad faith.
Additionally, the Complainant contends that bad faith can also be deducted from the Respondent’s use of the disputed domain name and associated email addresses to impersonate the Complainant to seek unauthorized payment. According to the Complainant, this is an indication that the Respondent registered the disputed domain name with a disruptive purpose in mind and for financial gain (see Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017).
The Complainant further contends that inaction of the disputed domain name can constitute bad faith in its own right and refers to other previous decisions of different panels to support that proposition. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name in this case is French. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding and contends it is likely that the Respondent is also proficient in the English language, as the disputed domain name is in English language. The Complainant also relies upon the fact the fraudulent email is sent entirely in English.
The Respondent, having received notice of the proceeding in English, did not make any submissions regarding the language of the proceeding and did not file a response.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judiciously in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
In the absence of any submissions to the contrary from the Respondent, the Panel finds the evidence relied upon by the Complainant referred to above provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to DELOITTE.
Secondly, the disputed domain name incorporates the whole of the DELOITTE trademark and the addition of the generic term “lawyer” to the DELOITTE trademark as the gTLD extension does not distinguish the disputed domain name from the DELOITTE trademark. In this case, the word “lawyer” is obviously one closely associated with the Complainant’s services. As such, the addition of that term only serves to increase the confusing similarity with the Complainant’s DELOITTE trademark. The Panel has considered and adopts the views of the panels expressed in the two UDRP decisions, supra, cited by the Complainant in this respect.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s DELOITTE trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;
- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.
In fact, the evidence shows that the disputed domain name has been associated with fraudulent conduct to cause confusion with the Complainant.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”
First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the DELOITTE trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the DELOITTE trademark. The longstanding and public use of the DELOITTE trademark and Complainant’s international prestige and presence makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights.
Based on the circumstances here, the Panel further finds that the Respondent used the disputed domain name in bad faith by impersonating the Complainant to seek unauthorized payment from a legitimate business. This can only be seen as a very clear fraudulent behavior. Registering a domain name which is confusingly similar to the trademark of a complainant and subsequently using such domain name to impersonate employees of the Complainant in an attempt to commit fraud is a clear example of registration and use in bad faith. This Panel considers such behavior as an attempt to disrupt the business of the Complainant as well as an attempt to exploit, for financial gain, the Complainant’s goodwill by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant further submits that is well settled that, in given situations, the fact that the disputed domain name is leading to an inactive website can constitute bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel endorses that view and finds, that in the circumstances of this case, this does not preclude a finding of bad faith.
In light of the foregoing, this Panel finds that the disputed domain has been registered and is being used by the Respondent in bad faith under the Policy. 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.
Benoit Van Asbroeck
Sole Panelist
Date: June 13, 2018
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