WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KPMG International Cooperative v. Lucien

Case No. D2019-3081

1. The Parties

The Complainant is KPMG International Cooperative, Netherlands, represented by Taylor Wessing, United Kingdom.

The Respondent is Lucien, France.

2. The Domain Name and Registrar

The disputed domain name <kpmg-group.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 18, 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 December 19, 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 December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2020.

The Center appointed Eduardo Machado as the sole panelist in this matter on February 3, 2020. 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 the global provider of audit, tax and advisory services. Said services are provided in approximately 153 countries by the Complainant’s member firms under the KPMG trademark. Its current form and initials, KPMG, result from the merger between Peat Marwick International (PMI) and Klynveld Main Goerdeler (KMG) in 1987.

The Complainant owns over 480 trade mark registrations containing the name KPMG throughout the world and licenses its use to the KPMG member firms worldwide.

Complainant’s registrations include United States 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. These also include European Union trade mark registration number 001179662 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. Printouts of the United States and European Union database records for the registrations are provided as Annex 7.

The global and member firm KPMG websites operate mainly under the flagship domain name <kpmg.com>. The Complainant also operates the global KPMG website at the URL “home.kpmg/uk/en/home.html”.

The Respondent registered the disputed domain name on November 18, 2019.

The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s registered marks, as it incorporates the KPMG mark in its entirety, with the addition of the descriptive suffix “group”.

The Complainant further alleges that the addition of the suffix “group” is not enough to prevent the association and confusion of the disputed domain name to the Complainant’s registered trademarks.

In addition to the above, the Complainant argues that the addition of the descriptive term “group” even enhances the confusion, as the disputed domain name could lead Internet users to believe that the Respondent’s domain name is related to the financial services offered by KPMG, a company within its corporate group, or an economic undertaking connected with KPMG, which is not true.

The Complainant continues to argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name considering that the disputed domain name was registered many years after the establishment of the Complainant’s KPMG mark.

Furthermore, the Complainant alleged that the Respondent has used the disputed domain name in an unlawful email scam, which evidently would not constitute any offering of bona fide goods and services.

In this regard, the Complainant affirmed that on November 26, 2019, a client of the Complainant in Portugal received a fraudulent email from “Dr. Maria Cristina Oliveira from KPMG” using the email address [. . .]@kpmg-group.net, alleging to be a KPMG lawyer employed by the Complainant. However, the Complainant informed that the name Dr. Maria Cristina Oliveira used by the Respondent would not be a real employee’s name. In this sense, the Complainant argues that the email scam would be an attempt by the Respondent to fraudulently obtain sensitive information relating to a purported confidential KPMG group company acquisition.

In addition, the Complainant argues that the fake email address and fake KPMG persona (Dr. Maria Cristina Oliveira) is identical to that in the domain name dispute KPMG International Cooperative v. Patrick, Patrick Filczinger, WIPO Case No. D2019-2751 (associated with the domain name <kpmg-fea.com>).

Moreover, the Complainant claims that there is no evidence that the Respondent has been commonly known by the disputed domain name, nor has the Complainant found any credible evidence that the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name, especially since the disputed domain name is not currently active.

The Complainant also argues that the Respondent’s bad faith in registration and use of the disputed domain name would be evidenced by the email scam above mentioned. In this sense, the Complainant claims that the Respondent’s registration and use of the disputed domain name would be an attempt to opportunistically attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous KPMG mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

Lastly, the Complainant argues that the registration and use of the disputed domain name would disrupt the Complainant’s business and image since it could mislead the public into believing that the disputed domain name is connected with KPMG and/or it will otherwise impede members of the public searching for genuine KPMG websites, due to the confusing similarity to the Complainant and its trademark registrations for KPMG.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Ownership of a trade mark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition , (“WIPO Overview 3.0”), section 1.2.1 . As disclosed through Annex 7 of the Complaint, the Complainant is the owner of trade mark registrations for the KPMG mark since 1998.

As found in a number of prior cases decided under the Policy (see, e.g., Philip Morris Products S.A. v. Han Ming, Lin Cheng, WIPO Case No. D2018-1635), when a trade mark is recognizable within a domain name, the addition of descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0 .

Thus, considering that the disputed domain name reproduces, in its entirety, the KPMG mark, with the mere addition of the dictionary term “group”, the Panel finds that paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel, can demonstrate Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the disputed domain name.

The uncontested evidence on the file shows that the Complainant had well-known rights in its mark at the time of the Respondent’s registration of the disputed domain name and that the Respondent nevertheless registered it.

Moreover, that the disputed domain name currently does not resolve to any active website does not create rights or legitimate interests in this disputed domain name on behalf of the Respondent.

Considering the evidence on file, and considering that the Respondent failed to send a reply to the Complaint, the Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name. On the contrary, as per the evidence attached to the Complaint, (Annex 9), the Respondent has used the disputed domain name to support an unlawful and fraudulent email scam for the disclosure of sensitive information.

The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the Respondent includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 website or location or of a product or service on the holder’s website or location.

In light of the above and considering the evidence on the file, the Panel understands that the circumstances described in paragraph 4(b)(iv) of the of the Policy fit those of the current proceeding.

The Complainant has proven that that the Respondent, by registering the disputed domain name which reproduces the entirety of the KPMG mark, did so with the intention of attracting the Complainant’s customers to the disputed domain name for commercial gain, profiting off the Complainant’s registered KPMG mark without the Complainant’s authorization.

Moreover, no evidence has been presented that the Respondent has any rights or legitimate interests in respect of the disputed domain name. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services.

Rather, as supported by Annex 9, the Respondent was using the disputed domain name to perform illegal activities, that is, an email scam for the disclosure of sensitive information. As evidenced by the referred annex, the Respondent used a fake email address and a fake KPMG persona in order to obtain sensitive commercial information relating to a purported confidential KPMG group company acquisition. Previous UDRP panels have found that this constitutes evidence of bad faith in registration and use (see KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard Inc. / Gary Biskol, WIPO Case No. D2017-1952 and Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367).

The fact that the disputed domain name does not resolve to any active website also contributes to a finding of bad faith registration and use of the disputed domain name, considering that such lack of activity in the disputed domain name suggests that the sole purpose of the registration of the domain name was to serve as a tool in an email scam.

Finally, the evidence also shows that the registration of the disputed domain name by the Respondent does not in any fashion predate the Complainant’s rights related to the KPMG mark. Nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s marks. On the contrary, based on the submitted evidence, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement thereof.

The Panel thus concludes that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <kpmg-group.net> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: February 7, 2020