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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deloitte Touche Tohmatsu v. Robert Thorp

Case No. D2001-1431

 

1. The Parties

The Complainant is Deloitte Touche Tohmatsu, a Swiss Verein (association) with a place of business at Zollikerstrasse, Zurich, Switzerland.

The Respondent is Mr. Robert Thorp, Marsham Court, London, United Kingdom.

 

2. The Domain Name and Registrar

The domain name is <deloittetouche.net> (the "domain name").

The Registrar for the domain name is CSL GmbH Joker.com.

 

3. Procedural History

A Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution Policy adopted on August 26, 1999, ("the Policy") by the Internet Corporation for Assigned Names and Numbers ("ICANN") and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999, ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

WIPO Arbitration and Mediation Center ("the Center") received the Complaint from the Complainant on December 6, 2001, by email and by hardcopy on December 11 and 27, 2001, with appropriate fee payment. The language of correspondence is English.

The Center sent an Acknowledgement of Receipt of the Complaint to the Complainant on December 11, 2001, in accordance with paragraph 4 of the Rules.

On December 13, 2001, the Center sent a Request for Registrar verification of registration data in accordance with paragraph 2(a) and 4 of the Rules to CSL GmbH Joker.com. The Registrar confirmed the receipt of a copy of the Complaint, that it is the Registrar of the domain name, that the domain name is registered to the Respondent’s name and that the service agreement under which the registration was made implemented the Policy.

On December 19, 2001, the Complainant amended the Complaint.

On December 20, 2001, the Center confirmed that the formal requirements were met.

On December 20, 2001, a Notification of Complaint and Commencement of Administrative Proceedings was sent to the Respondent by DHL and by email. The Respondent does not appear to have received the DHL.

The Respondent did not submit a Response by the due date. On January 11, 2002, the Center issued a Notification of Respondent Default to the Complainant by courier and by email.

On January 11, 2002, the Respondent contacted the Center asking that the email be treated as confidential. On January 17, 2002, the Center informed the Respondent that the communication was to be communicated to the other party and the panelist if it was to be relied upon in the proceedings. On January 21, 2002, the Respondent agreed that his email of January 11, 2002, could be communicated to the other party.

On January 28, 2002, Thomas H. Webster was appointed sole panelist and the expected decision date of February 11, 2002, was set.

On January 29, 2002, the Center forwarded to the Panelist a further submission of the Complainant with respect to the above.

The Panelist is satisfied that the Complaint was filed in accordance with the Policy, the Rules, and the Supplemental Rules and that the Panel was properly constituted.

 

4. Factual Background

The Complainant is "a Swiss Verein (similar to an incorporated membership association), is one of the world's leading accounting, auditing, management consulting, and tax advisory and other professional services organizations. Complainant's national practices employ more than 90,000 people in over 130 countries. In fiscal year 2000, it achieved its seventh year of record growth attaining global revenues of $11.2 billion."

The Respondent is an individual with an address in London, United Kingdom. According to the Respondent's email of January 11, 2002, the Respondent is an employee of the local affiliate of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following arguments with respect to this case (all quotations are from the Complaint unless otherwise indicated):

(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

"13. In connection with its international business, Complainant has obtained service mark registrations incorporating its DELOITTE & TOUCHE name around the world. Attached as Exhibit F is a database printout showing Complainant’s registrations for marks incorporating DELOITTE & TOUCHE around the world."

"19. The domain name is confusingly similar to Complainant's Mark. The fact that Respondent deletes the ampersand in the DELOITTE & TOUCHE mark does not distinguish the domain name from Complainant’s mark."

(ii) The Respondent has no rights or legitimate interests in respect of the domain name

"20. Respondent cannot demonstrate or establish any legitimate interest in the domain name. Complainant and Respondent have no relationship that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant's mark. Certainly, the domain name is not, nor could it be contended to be, a nickname of the Respondent or in any other way identified with or related to a legitimate interest of the Respondent."

(iii) The Respondent’s domain name have been registered and are being used in bad faith

"22. Over the past two months, while attempting to contact the Respondent and while drafting this Complaint, Complainant has accessed the domain name several times. Throughout this time, the domain name has always been forwarded to <uk2.net>, which is the listed domain name server for Complainant. …

23. On information and belief, Respondent receives a discount as a customer of <uk2.net> based on his forwarding Internet traffic to the site. To the extent that Respondent receives such commercial gain from use of Complainant’s mark, Respondent has violated Section 4(b)(iv) of the Policy.

24. Even if Complainant does not personally profit from forwarding the domain name to <uk2.net>, prior WIPO cases make clear that forwarding the domain name to a free holding page constitutes bad-faith use. In fact, in a situation exactly like this, where the domain name was also being forwarded to <uk2.net>, the WIPO panelist ordered the domain name transferred to Complainant upon a finding of bad faith. Thomas Cook Holdings Limited v. Tailor Made Travel, WIPO Case No. D2001-0435.

25. This line of cases is consistent with WIPO’s prior holdings that registration together with "inaction" constitutes bad faith use. …

26. Moreover, in a case such as this, where the domain name is so obviously connected with such a well-known company, Complainant’s bad faith may be presumed. See, e.g., Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (<veuveclicquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith…

B. Respondent

The Respondent does not contest the fact that the Complainant has rights to trademarks or that the trademarks could be confused with the domain name. Indeed, the Respondent states that he is an employee of a firm associated with the Complainant and that he is "entertaining the idea of creating an informal alumni for friends/ colleagues from the firm for social/ discussion/ networking purposes…"

The Respondent also maintains that he purchased <deloittetouche.co.uk> but that the UK affiliate of the Complainant was not interested in obtaining that domain name from him.

The Respondent has not alleged that he has a license from the Complainant or that he has a right under his employment contract to use the domain name in issue.

 

6. Discussion and Findings

The Complainant must show that all of the three elements are established in accordance with the Policy paragraph 4(a).

(i) The Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights

The Complainant has rights in numerous service marks. Those marks are virtually indistinguishable from the domain name in issue. The deletion of the ampersand is not material, especially in the context of the Internet. Therefore, the panelist is satisfied that the Complainant has satisfied the first requirement of the policy.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name

There is no evidence that the Respondent has a license from the Complainant. The fact that the Respondent is an employee of the UK affiliate of the Complainant does not give him any rights to use the service mark. Indeed, one would expect that such a relationship would have the contrary effect. Therefore, the panelist is satisfied that the Complainant has met the second requirement.

(iii) The Respondent’s domain name has been registered and is being used in bad faith

With regard to registration of the domain name, the panelist accepts that the service mark "Deloitte & Touche" is famous. Moreover, for an employee of an affiliate of the Complainant it must have been clear that the Complainant invested substantial sums in its service and trademarks and that it would be very concerned about use of them by third parties. Therefore, the situation is, if anything even more clear than that in the Veuve Clicquot case cited above.

The panelist does not find the explanation regarding potential future use for an employee site convincing. If that had been the original purpose, it would have been just as easy to register a domain name with an indication of that purpose instead of simply using the service mark (after deleting the ampersand).

With regard to use of the domain name, automatic redirecting to a commercial site creates the inference – albeit a rebuttable one – that the redirecting is made for a commercial purpose contrary to Section 4 (b) (iv) of the Policy. Moreover, as the Complainant has pointed out, even passive holding of a domain name may amount to evidence of bad faith in certain circumstances.

Therefore, the panelist is satisfied that the domain name has been registered and is being used in bad faith in violation of the Policy.

 

7. Decision

In accordance with the paragraph 4(i) of the Policy and paragraph 15 of the Rules, the panelist decides that the domain name is confusingly similar to the Complainant's service marks, that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent’s domain name has been registered and is being used in bad faith.

The panelist accordingly requires the Respondent to transfer the domain name to the Complainant.

 


 

Thomas H. Webster
Sole Panelist

Dated: January 31, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1431.html

 

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