The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing, United Kingdom.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Samy Badel, 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 July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 July 13, 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 July 14, 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 July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on August 26, 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 owns over 480 trade mark registrations containing the name KPMG throughout the world. These trademarks include United States (“U.S”) trade mark registration number 2339547 and European Union Trade Mark registration number 1011220 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) July 3, 1997 and December 3, 1998. The Complainant’s trademarks include European Union Trade Mark registration number 1179662 for the figurative mark KPMG, covering auditing, taxation services and advisory services in classes 35 and 36 (among other goods and services), filed on May 20, 1999. The disputed domain name was registered on April 20, 2021. The disputed domain name resolves to an inactive website but it was used to send fraudulent emails. 5. Parties’ Contentions A. Complainant The Complainant in this administrative proceeding 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 KPMG trademark. Member firms of the KPMG network are independent firms affiliated with the Complainant. KPMG member firms operate in approximately 147 countries, with more than 219,000 employees. The Complainant owns the KPMG trademark and licenses its use to the KPMG member firms worldwide. 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 prefix “ukltd” and a hyphen indicating the initials of the United Kingdom. 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 impersonate a Complainant’s employee, by way of an email scam. More specifically, an employee of an Spanish 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 “[…]@ukltd-kpmg.com”. According to the Complainant, the senior executive of KPMG whose identity was used for fraudulent emails from the “[…]@ukltd-kpmg.com” extension has confirmed that he 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. 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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: Considering these requirements, the Panel rules as follows: 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. 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. 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). 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. 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. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the expression “ukltd” as well as a hyphen in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the confusing similarity either. 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 (see also section 1.11 of WIPO Overview 3.0). Therefore, the Panel holds that the combination of the term “uk” which usually identifies the United Kingdom together with the expression “ltd” which often means limited and a hyphen, the Complainant’s trademark KPMG and the applicable gTLD “.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. 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 impersonate a Complainant’s senior officer 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 to a third party. 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. The Panel finds that the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0. 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. Bad faith can be presumed based on the widely evidenced recognition of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. It should also be bear in mind that the fraudulent manner in which the disputed domain name was used indicates that the Respondent registered the disputed domain name with the 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, the disputed domain name was still actively used for email services, i.e. for sending emails which impersonate the Complainant’s senior executive. 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 impersonate the identity of a Complainant´s senior executive, 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 Daniel Peña
(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.
Sole Panelist
Date: September 6, 2021
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