The Complainant is KPMG International Cooperative of Amstelveen, the Netherlands represented by Taylor Wessing LLP, United Kingdom.
The Respondent is Noel Lechauve of Alpes-Maritimes, 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 January 8, 2019. On January 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 25, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2019.
The Center appointed Teruo Kato as the sole panelist in this matter on February 25, 2019. 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 Complainant, “[t]he KPMG network is one of the world’s leading providers of audit, tax and advisory services. Those services are provided by the KPMG member firms under the trade mark KPMG. Member firms of the KPMG network of independent firms are affiliated with the Complainant. The KPMG member firms operate in approximately 155 countries, with over 174,000 employees. The Complainant owns the trade mark KPMG and licenses its use to the KPMG member firms worldwide.”
Complainant further contends that “[t]he Complainant owns over 480 trade mark registrations containing the name KPMG throughout the world. These include US trade mark registration number 2339547 and EUTM registration number 001011220 for the word mark KPMG, covering auditing, taxation services and advisory services in classes 35 and 36 (among other goods and services), filed on (respectively) 3 July 1997 and 3 December 1998.” and submitted the printouts of the relevant United States Patent and Trademark Office and European Union Intellectual Property Office online database records for that registration.
Complainant also contends that “[t]he global and member firm KPMG websites operate mainly under the flagship domain name . The Complainant operates the global KPMG website at the URL .”
The disputed domain name was registered on November 26, 2018. Evidence annexed to the Complaint indicates that the disputed domain name has been used in connection with an alleged fraudulent email scheme. 5. Parties’ Contentions A. Complainant
Complainant asserts that it, directly or as licensor to its individual member firms, has continuously and exclusively used the KPMG mark in connection with audit, tax and advisory services since 1987. Complainant argues that it has established very substantial rights in the trademark KPMG, that the mark KPMG is inherently distinctive and non-descriptive, and it is famous throughout the world, and that the KPMG brand has been consistently ranked among the world’s top brands for many years. The Complainant asserts that it owns over 480 trademark registrations containing the name KPMG throughout the world. Complainant asserts that its rights in the KPMG trademark have been recognized in twelve (12) previous WIPO UDRP panel decisions.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s KPMG mark because it contains the KPMG mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term “firm” creates confusion because the term, when used with the KPMG mark, conveys the meaning that the disputed domain name relates to services offered by the internationally renowned professional services firm KPMG, or an economic undertaking otherwise connected with KPMG.
Complainant further argues that Respondent lacks any rights or legitimate interests in the disputed domain name, because Respondent is not commonly known by the disputed domain name, is not in any way affiliated with Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent “has used the Domain Name on at least one occasion in an unlawful attempt to fraudulently obtain sensitive information relating to the financial affairs of a client of the Complainant by way of a telephone scam”.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith and, among others, cites the above mentioned “telephone scam” in support of its assertion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1.
Complainant has provided evidence that it has rights in the KPMG mark, which has been registered in the United States of America, the European Union, and elsewhere well before Respondent registered the disputed domain name. Complainant has also submitted evidence that the KPMG mark is known globally in relation to audit, tax and advisory services.
With Complainant’s rights in the KPMG mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the present proceeding, the disputed domain name is confusingly similar to Complainant’s KPMG mark as it incorporates the KPMG mark in its entirety as the first element of the disputed domain name. The addition of the descriptive term “group” separated by a hyphen from the KPMG element does not distinguish the disputed domain name from Complainant’s KPMG mark (and in fact may reinforce the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant’s company or affiliate member firms). See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner /Matthew Alvarez,WIPO Case No. D2016-1004.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the KPMG mark and in showing that the disputed domain name is identical or confusingly similar to this trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its KPMG mark and does not have any rights or legitimate interests in the disputed domain name. As shown by its failure to respond to the present administrative proceeding, Respondent has not produced any evidence to show that it has made any bona fide or fair use of the disputed domain names in connection with any product or service.
In this connection Complainant has submitted a copy of email correspondence dated December 19, 2018 in the Japanese language which appears to have been sent from a third party (who was according to Complainant one of its clients) to a member of staff of Complainant. Based on this Complainant alleges that “The third party reported this suspicious telephone call to the Complainant, on the basis that the caller falsely purported to be from the Complainant and provided a fraudulent email address, which comprises the Complainant’s KPMG trade mark”.
The Panel has examined the said email correspondence as submitted by Complainant and, notwithstanding that the identity of the third party was redacted by Complainant “for confidentiality/data protection issues”, the Panel is satisfied that the said email from the third party and its contents appear genuine.
In particular, the Panel notes that the third party stated in that email that a telephone call from a person purporting to be Complainant was received on December 19, 2018, that the caller claimed that there was an outstanding invoice of Complainant, that the third party became suspicious and asked the caller to reveal the invoice number in question, which the called did not entertain, that the caller, referring to a possibility of litigation, requested the third party to send an “empty” email to the said email address forthwith and that on a number of occasions the caller dismissed the responses from the third party that they would revert after speaking to their contact person at Complainant, alleging that that would be too late.
In the circumstances the Panel holds that there is a prima facie case that the name of Complainant and the email address containing the disputed domain name were used for fraudulent purposes.
Given that Complainant has established with sufficient evidence that it owns rights in the KPMG mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present proceeding, Respondent registered the disputed domain name that fully incorporates Complainant’s KPMG mark with the additional term “group” which may create confusion by suggesting to consumers that the disputed domain name relates to Complainant and its audit, tax and advisory services provided under the KPMG mark. Respondent has made at least one telephone call citing an email address incorporating the disputed domain name.
Accordingly, it is plain that Respondent was well aware of Complainant and its KPMG mark when Respondent registered the disputed domain name. And given the uncontested evidence indicating that Respondent has used the disputed domain name to make fraudulent requests to third parties seeking a settlement of an allegedly outstanding invoice of Complainant, it is clear to the Panel that Respondent specifically targeted Complainant and its KPMG mark, and has done so opportunistically and willfully.
The use of the disputed domain name for a scam as above demonstrates bad faith registration and use for Policy purposes. This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy as quoted above. See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard,WIPO Case No. D2017-0086.
Accordingly, The Panel holds that Complainant succeeds under this element of 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 names, , be transferred to the Complainant.
Teruo Kato
Sole Panelist
Date: February 27, 2019
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