The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kore Bailly, Blue Label, France.
The disputed domain name <kpmg-hk.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 16, 2019, 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 May 20, 2019 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 May 21, 2019.
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 May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 18, 2019. 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.
The Complainant is one of the world's leading providers of audit, tax and advisory services. Those services are provided by the Complainant’s member firms, which operate in approximately 153 countries, with more than 207,000 employees. The Complainant has been ranked consistently for many years as one of the "Big Four" professional services firms, together with Deloitte, Ernst & Young and PricewaterhouseCoopers. The Complainant’s existence spans three centuries, its current form and initials resulting from the merger between Peat Marwick International (PMI) and Klynveld Main Goerdeler (KMG) in 1987. The combined global revenue of the KPMG member firms in 2018 was USD 28.96 billion.
The Complainant owns over 480 trademark registrations worldwide containing the name KPMG. These include United States of America Registration No. 2,339,547 and European Union Trademark Registration No 1011220 for the word mark KPMG, covering auditing, taxation services and advisory services in international classes 35 and 36, among other goods and services, filed on July 3,1997 and December 3, 1998, registered on April 11, 2000 and April 25, 2000, respectively; and European Union Trademark Registration No. 1179662 for the design mark KPMG, covering auditing, taxation services and advisory services in international classes 35 and 36, among other goods and services, filed on May 20, 1999, registered on June 27, 2000 (hereinafter collectively referred to as the “KPMG Mark”). The Complainant licenses the use of the KPMG Mark to the Complainant’s member firms worldwide, which they have been using for over 30 years.
The Complainant and its member firms own the domain name <kpmg.com> and operate an official website at “www.kpmg.com”, through which it markets, promotes and provides its services.
The Respondent registered the Disputed Domain Name on January 29, 2019, many years after the Complainant began using the KPMG Mark. As of the writing of this decision, the Disputed Domain Name resolved to a blank landing page, demonstrating that the Disputed Domain Name is currently being used passively.1
The following are the Complainant’s contentions:
- The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the KPMG Mark.
It is uncontroverted that the Complainant has established rights in the KPMG Mark based on its decades of use as well as its numerous trademark registrations for the KPMG Mark worldwide. The Disputed Domain Name, <kpmg-hk.com>, consists of the KPMG Mark connected by a hyphen to the geographical abbreviation “hk”, which stands for Hong Kong, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
The addition of the geographic abbreviation “hk” for Hong Kong to the Complainant’s KPMG Mark does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not
prevent the domain name from being confusingly similar to the Complainant’s trademark).
Although the Disputed Domain Name contains a hyphen between the letters “hk” and “kpmg”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Silew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“this Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KPMG Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
First, the Disputed Domain Name was registered long after the Complainant’s KPMG Mark. The Panel finds it likely that the Respondent had the Complainant’s KPMG Mark in mind when registering the Disputed Domain Name.
Second, with respect to the use of the Disputed Domain Name, passive holding does not prevent a finding of bad faith. By using the Disputed Domain Name passively and having no content on its web page, the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335
Further, the Respondent once used the Disputed Domain Name to perpetrate a phishing scheme directed against the Complainant. The Respondent’s phishing scheme to send a fraudulent email purporting to come from the Complainant, seeking confidential information, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s KPMG Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Several UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.
Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s KPMG Mark for commercial gain.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <kpmg-hk.com> be transferred to the Complainant.
Lynda M. Braun
Date: June 21, 2019
1 Prior to the commencement of this proceeding, on the one occasion of February 6, 2019, the Respondent used the Disputed Domain Name in an email phishing scam. The Respondent attempted to obtain sensitive information relating to a purported highly confidential acquisition involving the Complainant. The Respondent sent a fraudulent email using the Disputed Domain Name to a party at the Complainant's office in China to discuss the alleged acquisition. The Complainant submitted the email as an Annex to the Complaint.
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