The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is Gita Ehsan, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2020. On November 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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 November 27, 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 December 1, 2020.1 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 December 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. On December 4, 2020, the Center received an informal email communication from the Respondent. However, the Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on December 29, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on January 15, 2021. 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 network of companies providing audit, tax and advisory services under the KPMG trade mark (the “Mark”) around the world, including under the domain names The Complainant is the owner of a very significant number of trade mark registrations for or incorporating the Mark around the world, including: - United States trade mark number 2339547, for the word mark KPMG, registered on April 11, 2000; and The Complainant’s trade mark rights in the Mark have been recognized in previous UDRP decisions. The disputed domain name was created on November 2, 2020. It currently resolves to the Registrar’s landing page and does not point to any active use by the Respondent but the Complainant alleges that the disputed domain name is being used to send fraudulent emails. The Respondent had sought to conceal its identity through use of a privacy service.2 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of the descriptive term “job”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name (in combination with the Mark, the name of a representative of the Complainant and the Complainant’s postal address), to further a fraud by use it to send emails to individuals informing them that there is a genuine job opportunity at the Complainant’s business in Canada. The Complainant alleges that these emails were sent for the purpose of obtaining sensitive information including personal information and passport details. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is inherently distinctive and is well known throughout the world. The Respondent’s own use of the disputed domain name to imitate the Complainant in its email campaigns further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith. The Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name contrary to the Policy. Finally, the Complainant argues that the Respondents use of the disputed domain name will disrupt the Complainant’s business by misleading Internet users into believing that the disputed domain name is connected with the Complainant and/or that it will impede Internet users searching for the Complainant’s genuine website. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions, only sending an email to the Center on December 4, 2020 stating: “Received the mail below for a domain registered under my account on namecheap. What would be the procedure for resolution?”. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (i) the disputed domain name is identical or confusingly similar to a trade mark 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. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the term “job” in the disputed domain name does not prevent a finding of confusing similarity nor does the addition of the gTLD “.com”. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to send emails seeking personal information and passport details of individuals does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the 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 The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behaviour is manifestly considered evidence of bad faith”. The disputed domain name is being used for a fraudulent email phishing scam for the purpose of collecting personal data which should be considered evidence of bad faith. The Panel notes that the Respondent has used the disputed domain name as a means of communication in a manner that will inevitably confuse recipients of such communications as to the origin of them. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. Therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name to send phishing emails which are intended to confuse the recipients of such emails as to their origin is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 Gareth Dickson 2 The case record shows that the disputed domain name was registered through the privacy service “WhoisGuard Protected, WhoisGuard, Inc.”.
- European Union Trade Mark number 001011220, for the word mark KPMG, registered on April 25, 2000.
Sole Panelist
Date: January 29, 2021 1 In doing so, the Complainant tracked the changes between the original and the amended Complaints and the Panel wishes to acknowledge, and encourage, the clarity that is provided by that simple step.
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