The Complainant is Andersen Tax LLC, United States of America (“United States”), represented by BSA Ahmad Ben Hezeem & Associates LLP, United Arab Emirates (“UAE”).
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Salman Ahmad, Raster Base, Pakistan / Andersen Chartered Accountants and AndersenPartners Accountants, UAE. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2020. On March 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2020, 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 March 19, 2020 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 March 19, 2020. 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 March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. On April 5, 2020, the Respondent sent an email communication to the Center requesting an extension of the due date for Response due to the COVID-19 situation. On April 5, 2020, The Center received an email communication from the Complainant objecting to the Respondent’s request. On April 7, 2020, the Center sent an email communication to the Parties informing them that the due date for Response has been extended until April 28, 2020. On April 27, 2020, the Respondent sent an email communication to the Center confirming that it will submit a response as soon as its office is open. On the same date, the Complainant sent an email communication to the Center objecting to any further extension to the due date for Response and the Respondent sent another email communication confirming that it will submit a response within 14 days. On April 27, 2020, the Center sent an email communication to the Parties confirming that the due date for Response remains April 28, 2020. The Respondent submitted the Response on April 28, 2020. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 5, 2020. 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 United States entity with global operations providing tax, financial and related advisory services. The Complainant can trace its origins to 1913, when Arthur Andersen started his own accounting firm, which was renamed “Arthur Andersen and Company” in 1918. The Complainant was founded in 2002 by former Arthur Andersen partners following the Enron scandal which had caused the dissolution of the Arthur Andersen business. The Complainant acquired the rights to the original Andersen brand name in 2014, renaming itself “Andersen Tax”. The Complainant has since been independently ranked as a “top tax firm” on a regular basis. The Complainant has founded an international association and global network of independent tax advisory firms named “Andersen Global”. The Complainant licensed its ANDERSEN family of trademarks for use within said network, which now has 2,500 professionals and a presence in 84 locations globally. Andersen Global has had a presence in Dubai, UAE, since January 16, 2018, when the Complainant began a collaboration with a local accounting firm, one of the oldest in the Middle East. The Complainant is the owner of a large variety of registered trademarks for its family of ANDERSEN formative marks, including for example European Union registered trademark No. 6001218 for the word mark ANDERSEN, registered on August 7, 2008 in international classes 35, 36, 42 and 45. In the UAE, the Complainant’s Andersen Global entity owns various ANDERSEN formative registered trademarks, the earliest of which is Nos. 245478-245480 for the word mark ANDERSEN LEGAL, registered on January 4, 2017 in international classes 35, 36 and 45. The Complainant owns various ANDERSEN formative registered trademarks in the UAE in its own right, namely, Nos. 269854-269855 for the word mark ARTHUR ANDERSEN, registered on January 18, 2018 in international classes 35 and 36, and Nos. 310823-310825 for the word mark ANDERSEN, registered on September 9, 2019 in international classes 35, 36 and 45. The Complainant maintains a large portfolio of domain names related to the ANDERSEN mark and its primary website is found at “www.andersen.com”, the domain name for which has been registered since October 30, 1988. The disputed domain name was created on February 13, 2018. It is currently used to provide a website for a firm of accountants in the UAE named Andersen Chartered Accountants and/or AndersenPartners Accountants (together, “the Respondent”). The registrant of the disputed domain name appears to be a website development company retained by the Respondent. The Response has been received from Andersen Chartered Accountants and/or AndersenPartners Accountants and the Panel accepts these entities as the true Respondent in the case. The Respondent holds two professional licenses from the Government of Dubai, namely No. 798990 in respect of the trade name AndersenPartners Accountants (Accounting and Bookkeeping), issued on January 23, 2018 and No. 816641 in respect of the trade name Andersen Chartered Accountants (Auditing of Accounts), issued on October 15, 2018. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. The Complainant describes its history, extensive international media promotion and global sales in connection with the ANDERSEN mark. The Complainant submits that the dominant term in the disputed domain name is the Complainant’s ANDERSEN mark and that the letters “uae” do not add anything and do not prevent such mark from being easily recognizable. The Complainant asserts that the Respondent does not have any connection with the Complainant, has not been licensed or authorized by the Complainant to use the disputed domain name or the Complainant’s marks, and is not making a legitimate noncommercial or fair use of the disputed domain name without intention of commercial gain. The Complainant submits that the Respondent has registered and currently uses the disputed domain name for the purpose of diverting Internet users to the Respondent’s own website, thereby occasioning confusion and by promoting competition using the Complainant’s trademarks. The Complainant asserts that the Respondent is aware of the Complainant and the operation of licensing structures under the Andersen Global brand and that instead of attempting to arrange a licensing agreement with the Complainant, the Respondent has used the disputed domain name to free ride off the ANDERSEN mark for commercial gain, adding that this may not be regarded as a bona fide offering of goods or services. The Complainant contends that the Respondent must have been aware of the Complainant prior to the creation of the disputed domain name in light of the impact which the Enron scandal had on global accounting standards, adding that any qualified and regulated accounting professional would be familiar with the Andersen brand and that the Enron scandal is commonly included in accounting degree syllabuses throughout the world. The Complainant asserts that in any event the Respondent is on constructive notice of the Complainant’s trademark rights. The Complainant adds that it has reason to believe that an entity related to the Respondent has filed trademark applications in the United Kingdom for ANDERSEN marks, which it says provides further evidence of bad faith. The Complainant states that it and its family of trademarks are well-known with a strong global reputation, and contends that there is no plausible reason for the Respondent to incorporate the ANDERSEN mark in the disputed domain name, other than an intent to use this to attract Internet users to the Respondent’s website for commercial gain via association with the Complainant’s brand. The Complainant asserts that the Respondent is using the disputed domain name to mislead visitors as to the ownership of its website, and to suggest that visitors have reached the UAE regional website of the Complainant, adding that this suggestion would appear reasonable because a number of the Complainant’s licensees have changed their name to “Andersen”. The Complainant concludes that the Respondent could not possibly make any plausible, actual, or contemplated active use of the disputed domain name that would not violate or infringe the Complainant’s trademark rights B. Respondent The Respondent requests that the Complaint be denied. The Respondent notes that its trade and professional names are duly approved by the competent authorities for accounting and bookkeeping services, adding that said authorities will not register any further business names which are close to the names used by the Respondent. The Respondent states that it developed its website on the basis of official approval of its business names. The Respondent notes that its main line of business is audit services to local small and medium sized enterprises and that this does not compete with the Complainant, adding that it is common knowledge that the Complainant’s predecessor was barred from offering audit services in 2002 and that the Complainant does not offer such services. The Respondent asserts that there can be no confusion between it and the Complainant’s licensed business in the UAE as the latter is a firm of tax consultants and does not offer accounting or bookkeeping services. The Respondent submits that the Complainant’s trademark ANDERSEN represents a common name and notes that the registration of such mark and an announcement by the Complainant on September 3, 2019 that it intended to rebrand from ANDERSEN TAX to ANDERSEN both post-date the Respondent’s registration of its business names. The Respondent states that it reserves the right to contest the Complainant’s ANDERSEN trademark, adding that the Respondent does not do business under any names corresponding to the Complainant’s earlier registered trademarks. The Respondent notes that it has published a statement on its website which it terms “a disclaimer of association” which it asserts gives clear notice to customers that it is not affiliated with the Complainant. The Respondent asserts that it has the right to use the disputed domain name by virtue of its business licenses and adds that the Complainant’s local entities could not use the term “Andersen UAE” without similar approval, which would not be granted due to the similarity to the Respondent’s business names. The Respondent submits that it registered and is using the disputed domain name in good faith and that the Complainant’s allegations of bad faith lack merit and supporting evidence. The Respondent states that its website has no traffic to mention in contrast to the Complainant’s assertions regarding the Complainant’s website and that the Complainant’s claims of dilution are not tenable. The Respondent concludes that the Complainant is using its size and influence to deprive the Respondent of its lawful rights and is seeking to hijack the disputed domain name in bad faith. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Preliminary matter: Court Proceedings In both the Complaint and the Amended Complaint, the section dealing with other legal proceedings states, “No formal legal proceedings have been commenced in connection with or in relation to the Disputed Domain Name. However, subject to compliance with our legal notice,”. The second sentence is incomplete, and it is not clear whether the Complainant intended to add anything of significance. In the corresponding section of the Response, the Respondent states, “The claimant [sic] has started legal proceedings in Dubai Courts under case number 58721/2020 for which first hearing date is June 8, 2020. On receiving the first notice from [the Complainant’s representative] in spite of our legal stance explained in our arguments above, we tried to resolve the matter amicably by having a meeting with [the Complainant’s representative] in his office, so that if there is any genuine grievance which may be addressed by understanding each other’s legal and factual position. However the attitude of [the Complainant’s representative] was not reasonable and even later on he refused to meet our legal consultant in his office and pressed unreasonable demands through emails. Please refer Annex 4”. The Respondent does not provide any information regarding the subject matter of the legal proceedings to which it refers in the Response and does not state whether these relate to the disputed domain name. The Respondent’s Annex 4 consists of emails between the Parties regarding possible meetings to discuss the dispute. The only reference to litigation in said Annex 4 is the mention in an email from the Complainant’s representative to the Respondent of “a soft copy of legal notice registered at Dubai Court”. Said notice is not included in the Respondent’s Annex 4. It may be the same as the Complainant’s “cease and desist” notice, a copy of which is found in the Complainant’s Annex 9. This contains assertions of trademark infringement but does not provide details of any litigation. Paragraph 18 of the Rules provides, inter alia: “Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” Paragraph 18(a) of the Rules thus provides that an administrative proceeding may be terminated or suspended in consequence of related legal proceedings, whether initiated prior to or during an administrative proceeding. Alternatively, the Panel may proceed to a decision, according to the exercise of its discretion. Section 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) discusses the issue of other legal proceedings and states that panels generally issue a UDRP decision on the merits even in an overlapping scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. The section also notes that panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding. In the present case, no information has been given by either of the Parties as to the subject matter of the litigation which the Respondent says has been initiated in the Dubai Courts and it is not clear whether the proceedings overlap with the present domain name dispute. Furthermore, neither of the Parties has requested that the administrative proceeding be terminated in consequence of any such litigation. In all of the above circumstances, the Panel considers that it is reasonable for it to exercise its discretion in favor of proceeding to a Decision in this matter. The Panel notes, however, that this Decision is without prejudice to any action which a relevant court may deem appropriate or necessary and is not addressed to any particular forum that is, or may ultimately be, seized of the matter. B. Identical or Confusingly Similar The first element under the Policy is generally regarded as having a low threshold. It functions primarily as a standing requirement, the intent being to determine whether the Complainant has “a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). The assessment is typically made, first, by reference to whether the Complainant has relevant rights in a trademark, and secondly, by making a straightforward side-by-side comparison of such trademark with the disputed domain name to determine identity or confusing similarity. It is not necessary for the purpose of this element that the trademark concerned pre-date the date of creation of the disputed domain name or be registered in the territory where the Respondent is based. In the present case, the Panel finds that the Complainant has UDRP-relevant rights in its ANDERSEN registered trademarks as noted in the factual background section above. Comparing the mark to the disputed domain name, it may be seen that the latter reproduces the mark exactly and merely adds the three letters “uae”. The Panel finds that these additional letters, whether intended as a geographic descriptor or not, do nothing to prevent the Complainant’s ANDERSEN trademark from being fully recognizable within the disputed domain name, given that said mark features as the first and most dominant component. The generic Top-Level Domain (“gTLD”), in the case of the disputed domain name being “.com”, is typically disregarded in the comparison process on the basis that it is required for technical reasons only and generally has no capacity to dispel confusing similarity. In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “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.” The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence of such rights or legitimate interests. In the present case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, on the basis of its submissions that the Respondent does not have any connection with the Complainant, has not been licensed or authorized by the Complainant to use the disputed domain name or the Complainant’s marks, and has registered and currently uses the disputed domain name for the purpose of diverting Internet users to the Respondent’s own website, thereby occasioning confusion and promoting competition via its adoption of the Complainant’s ANDERSEN trademark. In these circumstances, the burden of production shifts to the Respondent as outlined above. The essence of the Respondent’s case is that it selected and sought local approval for its use of the name “Andersen” as part of its trading name before the Complainant had registered its ANDERSEN trademark in the same jurisdiction. This is an argument along the lines of paragraph 4(c)(ii) of the Policy, in that the Respondent claims to be commonly known by the disputed domain name and does not specify any particular trademark rights of its own therein. For a respondent to make out a successful case in terms of paragraph 4(c)(ii) of the Policy, it would generally need to be able to show that it was commonly known by the domain name concerned prior to the date of such domain name’s creation. However, in the present case, the disputed domain name was created on February 13, 2018 and there is no evidence nor indeed any suggestion on the part of the Respondent that it was known as “Andersen” at a date which is much earlier than this. Neither of the Respondent’s trade licenses containing the term “Andersen” pre-date the disputed domain name to an appreciable extent. The license in respect of the trade name AndersenPartners Accountants was issued less than a month before the disputed domain name’s creation, and that for the trade name Andersen Chartered Accountants was issued just over seven months afterwards. On their own, the registration of trade licenses or incorporation of corporate entities do not fulfil the requirements of paragraph 4(c)(ii) of the Policy. As the panel in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 noted in similar circumstances: “… proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name. If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been “commonly known by” the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name. Any construction of the Policy which could open the door to a result like that cannot be right, and it seems to the Panel that the words “commonly known by” in paragraph 4(c)(ii) of the Policy call for at least some use of the name by the corporation prior to the registration of the corporation name as a domain name. In other words “commonly known by” must mean commonly known by at least some other people (i.e. other than those responsible for the registration of the corporation).” Adopting this approach, the Panel finds that the Respondent has not proved that it has been commonly known by the disputed domain name in terms of paragraph 4(c)(ii) of the Policy. The Response also suggests that, before notice of the dispute, the Respondent has used or made demonstrable preparations to use a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. No evidence of any such demonstrable preparations has however been produced. Indeed, the total evidence presented by the Respondent in this case consists of copies of its two trade licenses along with a screenshot of the disclaimer on the website associated with the disputed domain name and a compilation of certain email discussions between the Parties. For an offering of goods or services to be bona fide in the context of the Policy, the Respondent must have a legitimate connection to the name concerned. No such legitimate connection has been put forward in the present case. The Respondent simply notes that the name “Andersen” is a common name and does not explain why it selected that name in particular for its business. No suggestion has been made, for example, that any of the founders of the business have this particular surname, nor does the list of principals on the Respondent’s website (per the screenshot provided by the Complainant) show anyone by that name. This is all the more significant when the Respondent is faced with the fact that the ANDERSEN mark is very well-known globally in connection with the provision of the same or similar types of services as those provided by the Respondent, namely accounting and related services. The Respondent does not suggest that it was unaware of the reputation and notoriety of the ANDERSEN mark when it selected its business name or when it created the disputed domain name, nor could it have done so with any credibility. The Complainant demonstrates that it has obtained the global rights in the ANDERSEN mark formerly owned by the Arthur Andersen business and makes a compelling case that the name is known worldwide both by virtue of its own activities, which long pre-date the Respondent’s business licenses, as well as by virtue of the activities of the Complainant’s predecessors. The Complainant also shows that it publicised its expansion into the Middle East prior to the granting of the Respondent’s business licenses and the creation date of the disputed domain name. Given the notoriety of the Complainant’s ANDERSEN mark, it is simply not enough for the Respondent to assert that it has rights or legitimate interests in the disputed domain name because the Complainant had not registered the ANDERSEN mark on its own in the UAE at the time when the Respondent selected its business name and created the disputed domain name. In any event, by the date of creation of the disputed domain name, the Complainant held, directly or via Andersen Global, registered trademarks for ANDERSEN GLOBAL, ANDERSEN TAX, ARTHUR ANDERSEN, ANDERSEN CONSULTING and ANDERSEN LEGAL in the UAE, each in at least international classes 35 and 36. The former three marks, in particular, strike the Panel as being closely associated with the provision of accounting or related services on the evidence before it. All of said marks feature the “Andersen” element as a dominant component. Equally, the Panel is not persuaded by the Respondent’s argument that no confusion could arise because it offers audit services, while the former Arthur Andersen business was banned from offering such services in 2002. This argument, in and of itself, betrays the fact that the Respondent is well aware of the Complainant and its history. In short, none of the Respondent’s arguments demonstrate or even suggest that it has any plausible legitimate connection to the name “Andersen” which is unconnected with the Complainant’s rights. This appears on balance to point in the direction of the Respondent having selected such name entirely because of the Complainant’s rights and reputation, which therefore cannot confer rights and legitimate interests upon it. In all of the above circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case regarding rights and legitimate interests and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The Complainant’s case focuses predominantly on paragraph 4(b)(iv) of the Policy, in that the Complainant submits that the disputed domain name was registered by the Respondent with intent to use it to attract Internet users to the Respondent’s website for commercial gain by creating a misleading association with the Complainant’s brand, suggesting that the Respondent might be a representative of the Complainant’s global business in the UAE when it is not. As the Panel noted in the preceding section, no explanation has been tendered by the Respondent as to the reason why it selected the name “Andersen” for its business other than that it is a common name. No evidence has been presented that “Andersen” is a common name in the UAE in particular. From the Panel’s perspective, it seems beyond coincidence that of all the possible names that the Respondent might have selected for its accounting practice, common or otherwise, it happens to have chosen one that matches the name and trademark of a well-known global accounting business with a long and substantial history. The proximity in date between the Complainant announcing that it had entered the market in Dubai via its affiliate and the granting of the Respondent’s business licenses, a period of seven days, likewise seems to be beyond coincidence. On that topic, the Respondent merely notes that it started its license application “many weeks earlier” than the date of the start of the Complainant’s presence in Dubai. This submission is suspiciously vague, given that the precise date of the application is of some significance to the Respondent’s case and the details would be readily available to the Respondent and straightforward to validate via the competent authority. Even had the Respondent established that it had applied for the business license some weeks earlier, the Complainant has produced press coverage of its continuing expansion in the Middle East more generally, dating from December 19, 2017. As noted in the preceding section, the Response itself also betrays some prior knowledge of the Complainant’s predecessor on the part of the Respondent, in that the Respondent suggests that it cannot be in conflict with the Complainant’s rights because the Complainant’s predecessor was banned from auditing in 2002. This provides some reinforcement to the Complainant’s submissions and evidence that its ANDERSEN mark is very well known, not least because the historical background to the dissolution of its predecessor in title is commonly included in accounting degree syllabuses throughout the world. It is notable that the Respondent did not engage with the latter submission at all. It seems reasonable therefore for the Panel to infer that the reason for the Respondent’s selection of the name “Andersen” for its business name is bound up with the Complainant’s rights and that the Respondent was more probably than not seeking to benefit from association with the Complainant’s mark in bad faith. On the facts of this case, this is a more likely explanation than any suggestion that the Respondent came up with its name in good faith and entirely independently of the Complainant and its rights. The Respondent states that it has published a note on its website, which it describes as a “disclaimer of association”. This appears at the bottom of the “About Us” section and states that the Respondent’s business is an independent firm and has no affiliation, networking or association with any auditing, accounting, tax or legal firm. As section 3.7 of the WIPO Overview 3.0 notes, where a respondent appears otherwise to have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. However, as fully discussed in the preceding section, the Panel has been unable to identify any rights or legitimate interests in the disputed domain name on the Respondent’s part, based on the record in the present case. Furthermore, the statement on the Respondent’s website could not exactly be described as prominent, nor is there any indication of whether this was published before or after the Complaint was filed. Section 3.7 of the WIPO Overview 3.0 goes on to note that where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith, adding that panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. On the facts of the present case, the Panel subscribes to that particular view especially as it is entirely reasonable to infer the Respondent’s prior knowledge of the Complainant’s business. In all of the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met. E. Reverse Domain Name Hijacking The Respondent asserts that the Complainant is seeking to hijack the disputed domain name in bad faith. The Complainant has however prevailed on all three elements of paragraph 4(a) of the Policy and there is no evidence before the Panel that any of the Complainant’s actions in regard to the Complaint were actuated in bad faith. Accordingly, the Panel dismisses the Respondent’s allegations regarding reverse domain name hijacking. 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 Andrew D. S. Lothian
Sole Panelist
Date: May 19, 2020
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