The Complainant is Stichting BDO, Netherlands, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is ShenZhaoYong, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2021 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 in English on February 4, 2021. On February 1, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 4, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on April 11, 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 an international network of firms providing services in the fields of accounting, taxation, consulting and advice under the name BDO. The Complainant holds multiple trademark registrations, including United States trademark registration number 2,699,812 for BDO and device, registered on March 25, 2003, specifying goods and services in classes 9, 16, 35, 36, 41 and 42; and United States trademark registration number 4,854,142 for BDO, registered on November 17, 2015, specifying goods and services in classes 9, 16, 35, 36, 41, 42 and 45. Those trademark registrations remain current. The Complainant has also registered “bdo” as the operative element of multiple domain names, including BDO USA, LLP is a firm in the Complainant’s network. On January 8, 2021, it announced its pending combination with MBAF, a Florida-based accounting and professional services firm. The announcement was reported in the accounting press, including online, on and after that date. The announcement noted that, as part of the combination, an MBAF-affiliated management consulting firm named Fiscal Management Associates, LLC would be named “BDO-FMA, LLC”. On the same day, Fiscal Management Associates, LLC announced that it would be known as “BDO FMA” from the effective date of the combination. Fiscal Management Associates, LLC is the registered proprietor of United States trademark registration number 3,585,526 for FMA, registered on March 10, 2009, specifying services in classes 35, 36 and 41. The record of this proceeding does not include evidence of a transfer of that registration to the Complainant, nor a consent from Fiscal Management Associates, LLC to the filing of this dispute by the Complainant. The Respondent is an individual resident in China. The disputed domain names were registered on January 8, 2021. They do not resolve to any active website; rather, they are passively held. 5. Parties’ Contentions A. Complainant The disputed domain names are nearly identical and confusingly similar to the Complainant’s famous BDO trademark. The disputed domain names contain the Complainant’s complete BDO trademark, paired with the registered trademark FMA (and a hyphen in one disputed domain name), which serves to create a direct reference to the Complainant’s recent acquisition of the company Fiscal Management Associates, LLC. The Complainant now owns the rights in the FMA trademarks. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant’s BDO mark is not a generic or descriptive term in which the Respondent might have an interest. The Respondent is neither affiliated with the Complainant, nor has it been licensed or permitted to use the Complainant’s BDO mark or any domain names incorporating the BDO mark. The Respondent is not commonly known by either of the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names were registered and are being used in bad faith. Given the well-known status of the Complainant’s BDO marks and the Complainant’s registration and use of the domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names wholly incorporate the Complainant’s company name and trademark, which is comprised of letters from the English alphabet, paired with initials that refer to another English-language company name; and allowing the dispute to proceed in the Chinese language would force the Complainant to incur additional costs and expenses. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. Despite the Center having sent the notification of the Complaint, the written notice of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the amended Complaint would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each of the disputed domain names: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the BDO mark. The disputed domain names wholly incorporate the BDO mark as their respective initial elements. They also include the FMA mark, which is registered in the name of a third party. In one disputed domain name, the two marks are separated by a hyphen. Given that the Complainant’s BDO mark is clearly recognizable within the disputed domain names, the addition of this third party trademark, either with or without a hyphen, does not avoid a finding that the disputed domain names are confusingly similar to the BDO mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12. The only other element in the disputed domain names is a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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] acquired no 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 disputed domain names wholly incorporate the Complainant’s BDO mark as their respective initial elements. The Complainant submits that the Respondent is neither affiliated with the Complainant nor licensed or permitted to use the Complainant’s BDO mark. The disputed domain names are passively held. That is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, and there is no evidence of any demonstrable preparations to make such a use of the disputed domain name. Nor is this a legitimate noncommercial or fair use of the disputed domain names for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is identified in the Registrar’s private WhoIs database as “ShenZhaoYong”, not the disputed domain names. There is no evidence that the Respondent has been commonly known by either of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain names were registered in 2020, years after the registration of the Complainant’s BDO marks. The disputed domain names incorporate the BDO mark as their respective initial elements. The disputed domain names were registered on the same day that it was announced that the United States member of the Complainant’s network would combine with a firm named MBAF and that the MBAF affiliate Fiscal Management Associates, LLC would be renamed “BDO-FMA, LLC” or “BDO FMA”. The disputed domain names reproduce the distinctive element of that new name, with and without a hyphen. The Panel does not consider the timing of these registrations to be a coincidence. Rather, it indicates an awareness of the Complainant, its BDO mark and the announced transaction. The Respondent offers no explanation for his choice of the disputed domain names. In view of these circumstances, the Panel is persuaded that the Respondent knew of the Complainant’s mark at the time at which he registered the disputed domain names and targeted that mark. With respect to use, the Respondent currently makes only passive use of the disputed domain names. That circumstance does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has acquired a considerable reputation in the BDO mark in connection with accounting and other professional services through long-standing and widespread use. The disputed domain names were registered on the same day that the United States member of the Complainant’s network and a new affiliate announced the new name of that affiliate, and the disputed domain names reproduce that new name, including the BDO trademark. The Complainant submits that the Respondent is not affiliated with the Complainant. In the Panel’s view, the most likely intended uses of the disputed domain names involve capitalizing unfairly on the Complainant’s BDO mark as part of its new affiliate’s name. The Respondent provides no explanation of any other potential use of the disputed domain names. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain names in bad faith. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 This transfer is ordered without prejudice to any rights that the registered proprietor of the FMA mark, Fiscal Management Associates, LLC, may assert with respect to the disputed domain names. Matthew Kennedy
Sole Panelist
Date: April 15, 2021
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