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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deloitte Touche Tohmatsu v. Open Water Enterprises Limited, Louise S.

Case No. D2008-1632

1. The Parties

The Complainant is Deloitte Touche Tohmatsu of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC of United States of America.

The Respondent is Open Water Enterprises Limited, Louise S., of Mahe, Seychelles.

2. The Domain Name and Registrar

The disputed domain name <deloittee.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2008. On October 28, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On October 28, 2008, eNom, Inc. 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 October 29, 2008, 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 October 30, 2008. The Center verified that the amended 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, and the proceedings commenced on October 31, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2008.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 26, 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

The Complainant, Deloitte Touche Tohmatsu, is widely known as Deloitte or Deloitte’s. It provides accountancy, business management consultation and finance advisory services internationally. Local companies that become members or a part of the Deloitte business maintain certain standards and are authorised to use the parent company’s trademarks.

The Complainant owns the following registrations of the DELOITTE trademarks in the United States of America in the relevant classes:

DELOITTE Reg. No. 3,002,108 registered June 27, 2005

International classes 009, 035, 036, 042;

DELOITTE & TOUCHE Reg. No. 1,602,793 registered September 25, 1996;

DELOITTE & TOUCHE Reg. No. 2,052,869 registered April 15, 1997.

Complainant has an Internet website at “www.deloitte.com”.

Nothing is known about the Respondent except for the information it has provided in the registration document for the disputed domain name.

The disputed domain name was registered on June 20, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a major and famous international firm, with aggregate global revenues for member firms in 2008 projected to be USD 27 billion. Substantial goodwill exists in the DELOITTE trademarks.

The Complainant contends that it has rights in the trademarks listed above, and provides documentary evidence to the effect that they were registered in its name before the disputed domain name was registered. Deloitte’s is famous and the subject of favourable comment through, for instance, the New York Times, Business Week, Washington Post, Financial Times, Wall Street Journal, Bloomberg TV, Forbes.com and Chicago Business. The Complainant’s member firm in the United States of America has been ranked first in the Top 100 Tax & Accounting Firms by Accounting Today magazine.

The Complainant further contends that the disputed domain name is identical or confusingly similar to the DELOITTE trademarks. The distinctive part of the disputed domain comprises DELOITTE mis-spelt by having an extra “E” on the end, as “deloittee”. Thus the Respondent’s corresponding website will be viewed by Internet users who make the same spelling mistake.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant and the Respondent have no relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating or confusingly similar to the DELOITTE trademarks. The disputed domain name is not a nickname of the Respondent or in any other way identified with or related to a legitimate interest of the Respondent. The Complainant cites previous UDRP decisions as proposed precedent for the position that the use of a domain name incorporating another’s trademark to link to other websites in order to collect referral fees cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It is inconceivable that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name and this alone leads to a presumption of bad faith (citing, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The Respondent’s activity constitutes typosquatting, being an attempt to mislead Internet users by the use of a domain name consisting of the Complainant’s trademark with a predictable spelling mistake, and is indicative of bad faith.

The format of the Respondent’s website strongly suggests that the Respondent is obtaining “click-through” revenue from referrals through links to other websites. Some of these are competitors of the Complainant. This amounts to exploitation of the Complainant’s goodwill for financial gain by creating confusion as to the source or endorsement of the Respondent’s website.

The Complainant requests the transfer to it of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:

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

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

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

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant is required to prove that it has rights in a trademark to which the disputed domain name is confusingly similar.

The trademark in which the Complainant asserts rights is DELOITTE. The Panel is satisfied from the documentary evidence filed with the Complaint that the Complainant owns and holds rights in the trademark DELOITTE in numerous countries worldwide.

The disputed domain name is <deloittee.com>, which differs from the Complainant’s trademark in having and extra letter “E” on the end of DELOITTE and in being followed by “.com”. The gTLD directory designation “.com”, or similar, being an integral part of a domain name, is to be disregarded. The remainder, “deloittee”, is similar to DELOITTE. Whether it is confusingly similar is a matter of fact. It has long been accepted that, in general, the alteration of a trademark by the addition of prefix or suffix letters, or descriptive words, does not usually create a distinction from the trademark (Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068; Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO Case No. D2000-0074). The Panel finds on the facts that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant certifies that it has no relationship with the Respondent and has not licensed or permitted it to use any domain name incorporating or similar to its trademarks. The Respondent is not in any way known by a name similar to the disputed domain name. The Panel is satisfied that the Complainant has made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name. It is open to the Respondent to refute the Complainant’s prima facie case in the terms of Paragraph 4(c) of the Policy or otherwise.

The Respondent has not replied. The Panel can find no grounds to believe that the Respondent is using the disputed domain name for a bona fide offering of goods or services, has been known by the name, or is making a noncommercial or fair use of it. The Panel finds for the Complainant in the terms of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant has provided documentary evidence of the Respondent’s mode of use of the disputed domain name, in the form of a number of screenprints from the various pages of the corresponding website. From these it appears superficially as though the Respondent’s website provides information and services broadly related to business, management, taxation, financial advice and related educational services. It is apparent, however, that these various leads are essentially links to other websites.

The typical business model underpinning the Respondent’s website is plainly recognisable. It is the generation of revenue for the Respondent in the form of fees paid by those advertisers to which the viewers connect by clicking on the links provided. The business model is known as “click-through” or “pay-per-click”, which in itself may be entirely legitimate. The business only earns revenue, however, if it can attract viewers who may follow the links offered.

In the present case it is reasonable to conclude that the Respondent attracts viewers by displaying the Complainant’s trademark with an error of spelling that some Internet users may predictably make, i.e., to follow the double “t” in DELOITTE with an inadvertent double “e”, or may make because they mis-read the spelling of the Complainant’s name. The practice of taking advantage of typing mistakes is well known and in the context is often called typosquatting or typopiracy. The attraction of visitors in this way, if they are expected to follow some of the links provided, is potentially profitable and commercial for the Respondent, but relies fundamentally on the Complainant’s trademark as the mode of attraction. On the evidence, the name Deloitte is universally recognised to the extent that it is difficult to escape a finding that the Respondent was aware of it, particularly since the Respondent is using it in the same broad field of business as the Complainant’s. The Panel finds on the balance of probabilities that the Respondent has attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the endorsement of the Respondent’s website, within the meaning of Paragraph 4(a)(iii) and Paragraph 4(b)(iv) of the Policy.

The circumstances of bad faith detailed in Paragraph 4(b) of the Policy are illustrative and bad faith may be found alternatively. The registration of a well-known trademark as a domain name by an entity having no credible reason for doing so has been held, in and of itself, to be evidence of bad faith (e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The Panel accepts that the Complainant’s trademark is sufficiently recognised internationally that in this case the Respondent’s registration of it without good reason, and for use in the same field of business, constitutes further evidence of bad faith.

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 <deloittee.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: December 10, 2008