The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Juan, Israel. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2021, 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 February 5, 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 on February 8, 2021. 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 February 11, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on March 5, 2021. The Center appointed Petra Pecar as the sole panelist in this matter on March 9, 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 Swiss company headquartered in Amsterdam, Netherlands. The Complainant operates in approximately 147 countries, providing a wide range of services covering audit, tax and advisory services. The Complainant along with its affiliates, owns a number of trademarks including the trademark KPMG which has been used for more than thirty years. The Complainant owns inter alia the following trademark registrations: KPMG, United States of America (“U.S.”) Registration Number 2339547, registered on April 11, 2000; KPMG, European Union Trademark (“EUTM”) Registration Number 001011220, registered on April 25, 2000; and KPMG (& Design), EUTM Registration Number 001179662, registered on June 27, 2000. The disputed domain name was registered on December 2, 2020, through a proxy (privacy shield) service. According to evidence provided by the Complainant, the disputed domain name does not resolve to any active website, but it has been documented that it was used for a fraudulent email scam. The Respondent is an individual located in Israel. 5. Parties’ Contentions A. Complainant The Complainant is an international business service company that provides a wide range of services covering audit, tax, and advisory services, recognized and ranked consistently for many years for its professional services. The Complainant owns the trademark KPMG and licenses its use to its member firms worldwide. The Complainant owns a number of trademark registrations containing the name KPMG throughout the world. The Complainant's trademark rights have been recognized within at least 24 previous WIPO UDRP decisions, which are referenced within the Complaint. According to the Complainant, the disputed domain name is confusingly similar to its KPMG trademark because it contains its KPMG mark in its entirety combined with the descriptive prefix “global” indicating the company's global operations. The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its mark, and that the Respondent is not commonly known by the disputed domain name. Further, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name in an unlawful attempt to fraudulently obtain a substantial amount of money from a third party, by way of an email scam. More specifically, an employee of an Italian company was engaged in an extensive fraudulent email communication, where he was contacted, inter alia, by a person using the identity of one senior executive of KPMG through an email that uses the extension “[…]@global-kpmg.com”. This well-prepared fraud was executed by addressing the employee from several different sources (each confirming the allegation of the others) and requesting the payment of a substantial amount of money to be performed by an Italian company as part of a secret trade operation that cannot be immediately publicly disclosed. According to the Complainant, the senior executive of KPMG whose identity was used for fraudulent emails from the “[…]@global-kpmg.com” extension has confirmed that he/she has no connection with the Respondent or the fraudulent transaction. The Complainant argues that the disputed domain name was registered and is being used in bad faith since the same was used for the purpose of an unlawful and fraudulent email scam to elicit a third party into transferring funds, as described above. 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 the Complainant must demonstrate that: (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1). The Complainant has provided evidence of its rights in the trademark KPMG on the basis of its multiple trademark registrations in the European Union and U.S. All of these KPMG trademarks were duly registered long before the Respondent registered the disputed domain name on December 2, 2020. The disputed domain name consists of the Complainant’s trademark KPMG, together with the descriptive term “global”, presumably in reference to the Complainant’s global operation, a hyphen and the applicable generic Top-Level Domain (“gTLD”) suffix “.com”. Because the Complainant’s KPMG trademark is recognizable within the disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing similarity. It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. This is especially relevant when the other elements in the domain name are descriptive. Numerous UDRP panels have recognised that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels. Therefore, the Panel holds that the combination of the term “global” together with a hyphen, the Complainant’s trademark KPMG and the applicable gTLD suffix “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s KPMG mark, which remains clearly recognizable in the disputed domain name (see also section 1.11 of WIPO Overview 3.0). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name, since the Respondent is an individual with no apparent connection with the KPMG trademark. The Respondent used the disputed domain name in an unlawful attempt to fraudulently obtain a substantial amount of money from a third party, by way of an email scam. Specifically, the Respondent used the disputed domain name to execute a well-deliberated fraud that included the sending of an email chain that purported to come from the Complainant to a third party fraudulently requesting that third party transfer a significant amount of money to a specified bank account. The emails in question did not come from the Complainant or any of its employees, but have instead used the identity of one of the Complainant’s senior executives. In this regard, the Panel finds that use of the disputed domain name for an email scam cannot under any circumstances constitute a bona fide or legitimate use of the disputed name. In accordance with section 2.13.1 of WIPO Overview 3.0, use of a domain name for illegal activity (including fraud) can never confer rights or legitimate interests on a respondent. The Panel concludes, that the Respondent deliberately chose to include the Complainant’s KPMG trademark in the disputed domain name, in order to achieve commercial gain by misleading third parties, and that such use cannot be considered as a legitimate, noncommercial or fair use. Given the above, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as 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 who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the 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 trademark 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. With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its KPMG trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the KPMG mark at the time the disputed domain name was registered. A similar finding was confirmed within the case KPMG International v. H S Youn, WIPO Case No. D2008-0037, where the panel found that: “[…] since the Complainant’s marks are well known worldwide and in the Republic of Korea, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware of the Complainant’s marks. Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of Europe or the Republic of Korea, or of many other countries would have made Complainant’s registrations known to the Respondent.” It should also be borne in mind that the fraudulent manner in which the disputed domain name was used indicates that the Respondent registered the disputed domain name more likely than not with the clear intention to impersonate the Complainant, which makes it virtually impossible that he was not aware of the Complainant’s rights at the time of registration. The disputed domain name does not resolve to any active website. However, based on the evidence provided by the Complainant, it seems that the disputed domain name was still actively used for email services, i.e. for sending emails which impersonate the Complainant's senior executive and by which the transfer of the significant amount of money was requested. Moreover, the Respondent’s fraudulent emails included the KPMG trademark, the KPMG logo and some of the details on the Complainant’s senior executive whose identity was used for this fraud. Such use of the disputed domain name can only be observed as clear evidence of the Respondent’s bad faith (see, in particular, sections 3.1.4 and 3.4 of WIPO Overview 3.0). Considering all of the above circumstances, the Panel concludes that the Respondent has used the disputed domain name in an unlawful attempt to obtain fraudulently a substantial amount of money from a third party, by way of an email scam. This clearly constitutes evidence of bad faith registration and use. The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 name Petra Pecar
Sole Panelist
Date: March 23, 2021
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