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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

KPMG International v. H S Youn

Case No. D2008-0037

 

1. The Parties

The Complainant is KPMG International, Amstelveen, the Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.

The Respondent is H S Youn, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <kpmgeurope.com> is registered with HANGANG Systems Inc. dba Doregi.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008. On January 10, 2008, the Center transmitted by email to HANGANG Systems Inc. dba Doregi.com a request for registrar verification in connection with the domain name at issue. On January 11, 2008, HANGANG Systems Inc. dba Doregi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar informed the Center that the registration agreement was in Korean. In reply to the Center’s notification of language of proceeding, the Complainant on January 29, 2008, submitted a request to proceed in English with related evidence. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint (with the Center’s covering documents being both in Korean and English), and the proceedings commenced on January 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2008. The Response was filed in Korean with the Center on February 18, 2008.

On February 20, 2008, the Complainant sent an email communication to the Center regarding, inter alia, that Respondent’s Korean language Response not be taken into account, or in the alternative, that an English language translation be ordered prior to rendering a Decision.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 28, 2008. 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

KPMG International is a co-operative. Member firms of the KPMG network of independent firms are affiliated with KPMG International. The KPMG network is one of the world’s leading providers of audit, tax and advisory services, which are provided by the KPMG member firms. KPMG has been ranked consistently for many years as one of the “Big Four” accountancy firms (together with PricewaterhouseCoopers, Deloitte Touche Tohmatsu and Ernst & Young).

KPMG is the housemark of the KPMG network and is the name by which KPMG member firms are commonly known. KPMG member firms have been trading under the trade mark KPMG and other marks containing this name throughout the world for many years, including Europe and the Republic of Korea.

KPMG currently operates in 148 countries and has over 123,000 professionals working in member firms around the world, including offices throughout Europe and in the Republic of Korea.

KPMG International and its member firms advertise and market widely, in particular through events and conferences, and also through the print and broadcast media and Internet.

The Complainant owns around 900 trademark registrations throughout the world containing the name KPMG, including registrations throughout Europe and 20 registrations in the Republic of Korea.

The Complainant owns at least 1,000 domain names containing the word “KPMG”.

The Respondent is an individual residing in Seoul, Republic of Korea.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the first element of the domain name consists of the name KPMG, which is identical to the Complainant’s KPMG mark. The second element of the domain name consists of the geographical indication Europe, which either: (a) should be disregarded because it is purely descriptive and so does nothing to distinguish the domain name from the KPMG mark; or (b) will confuse Internet users into believing mistakenly that the domain name is connected with KPMG or more specifically its European operations. It is also well established that the top level domain “.com” should be disregarded. On this basis, the domain name is nearly identical to the KPMG mark.

The Complainant has not licensed or otherwise authorized, and has no connection with, the registration or use of the domain name. The Complainant contends that the use of the domain name to link to a pornographic website does not amount to a bona fide offering of goods or services (Annex 7, Complaint)

The Complainant contends that the Respondent must have been aware of the KPMG mark, and must have had it very much in mind, when he or she registered the domain name, due to its fame – including in the Republic of Korea, where the Respondent is based. Even a basic Internet search would have immediately disclosed the Complainant’s rights. In addition to being well known, the mark KPMG is unusual, non-descriptive and inherently distinctive. It is therefore simply not credible that the Respondent came up with the name KPMG independently of the Complainant’s KPMG mark.

The Complainant contends that the domain name was registered and is being used in had faith because the Respondent must have registered the domain name fully expecting that it would attract a significant number of users to its site, and thereby generate a significant volume of business opportunities for the Respondent.

The Complainant further contends that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its site, by creating a likelihood of confusion with the KPMG mark as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

The Respondent claims that he plans to establish a sports marketing company like IMG.

The Respondent claims to have applied for and obtained registration for the EURO KPMG mark on February 1, 2008 in the Republic of Korea, and purchased the disputed domain name from a third party in November 2007.

The Respondent claims that KPMG stands for “Korea Professional Management Group”.

 

6. Discussion and Findings

A. Language of Proceedings

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however the Complainant asserts that English should be the language of the proceeding. The Response was submitted in Korean, and in its Response the Respondent requested a Panel with understanding of Korean language be appointed.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the registration agreement for the domain name in dispute was made in the Korean language. However, the Complainant has submitted a request that English be the language of proceedings in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has sufficient ability communicating in the English language.

On the other hand, the Complainant says it is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel confirms its understanding of both English and Korean language and hereby decides, under Paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but on the condition that (ii) the Panel will consider the Response submitted in Korean. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

A Panel may draw such inferences from a Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, a Complainant must prove each of the following:

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

(ii) Respondent 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.

C. Identical or Confusingly Similar

The Complainant’s KPMG marks are registered throughout the world.

The domain name is made up of a simple combination of the Complainant’s mark and the geographical location of Europe. The only difference between the domain name and the Complainant’s mark is the addition of the word “Europe” and the generic top level domain identifier “.com”. The addition of the geographical term “Europe” does not prevent a finding of confusing similarity.

This reasoning is consistent with many previous WIPO decisions in which it has been ruled that the addition of a geographic name does not distinguish the domain name from the trademark (see, among others, BP p.l.c.v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).

Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, Paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks, which the Respondent has not denied. The Panel considers that the Respondent has not presented sufficient evidence to establish that the Respondent has been commonly known by the disputed domain name. While the Respondent claims that he intends to establish a sports marketing company, virtually no evidence of that has been provided to the Panel other than a trademark registration for “EURO KPMG” which Respondent appears to have obtained in February 2008.

Previous panels have recognized that while it is certainly possible for a respondent to rely on a valid trademark registration to show prior rights under the Policy, that does not necessarily mean that mere registration of a trademark of itself automatically creates a legitimate interest under the Policy. For example, it would not amount to a legitimate interest for a name to be selected and used by a respondent with the intent to trade on the fame of a complainant’s mark, as this would not constitute a “bona fide” offering of goods or services for the purpose of the Policy.

As stated by the learned three-member panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847:

“To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”

See also Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011.

In this particular case, the Respondent has offered little by way of plausible explanation for the choice of a name which wholly incorporates Complainant’s well-known KPMG mark. Its choice in the circumstances does not strike the Panel as likely to have been a coincidence. The available record in these proceedings does not establish to the Panel’s satisfaction that the Respondent has made demonstrable preparations for a bona fide offering of goods or services in the jurisdiction in which the mark was obtained, or elsewhere. While the Panel does not entirely exclude such possibility, the Panel believes it is more likely than not that the name was selected and used by Respondent with the intent to trade on the fame of Complainant’s mark.

In sum, the Respondent has not persuasively invoked any circumstance that on the present record demonstrates to this Panel’s satisfaction a right or legitimate interest in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel finds 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.

The Respondent has, in using the domain name, apparently diverted Internet users to a third party website on which pornographic content appears. In particular, the Panel has noted the evidence provided by the Complainant indicating that the disputed domain name was previously linked (according to the Complainant’s usage report as of December 17, 2007, Annex 7, Complaint) to a website at “www.thehun.net” on which pornographic content appears, which has not been adequately explained by the Respondent. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at paragraph 8). It would also appear to be somewhat inconsistent with the Respondent’s claims regarding sports marketing.

In any event, the conduct described above falls, on the face of it, squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes on the record available here that the Respondent registered and used the domain name in bad faith.

The Respondent’s apparent registration of a trademark for EURO KPMG does not suffice to offset the Panel’s finding of bad faith in the present circumstances. While the Panel expresses no view on the validity of the trademark registration itself, for the purposes of the Policy the Panel believes it is more likely than not that the Respondent obtained the domain name because of its evident similarity to the Complainant’s well-known KPMG mark. The Panel can only base its decision on the available record, and on that basis the Complainant has succeeded in persuading the Panel that the disputed domain name was registered and used in bad faith for the purpose of this expedited proceeding under the Policy.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kpmgeurope.com> be transferred to the Complainant.

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Thomas P. Pinansky
Sole Panelist

Dated: March 17, 2008