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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Moniker Privacy Services / Dan Booker, Total Net Solutions
Case No. D2008-1489
1. The Parties
The Complainant is Deloitte Touche Tohmatsu of Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, United States of America (вАЬUnited StatesвАЭ or вАЬU.S.вАЭ).
The Respondent is Moniker Privacy Services, of Pompano Beach, Florida, United States / Dan Booker, Total Net Solutions of Greensborough, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <delottetouche.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on September 30, 2008. On October 2, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 4, 2008, Moniker Online Services, LLC 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 14, 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 16, 2008. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ or вАЬUDRPвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
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 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the RespondentвАЩs default on November 12, 2008.
The Center appointed Syed Naqiz Shahabuddin 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a Swiss Verein. A Swiss Verein is an entity without an exact legal counterpart in the United States, but which has certain of the attributes of an incorporated membership association. It has a legal personality separate and legally distinct from its members, which are the various professional services firms organized around the world and which use the DELOITTE & TOUCHE marks and similar names and marks in their practices under license from the Complainant.
4.2 The Complainant was formed to provide its member firms with specified services. The Complainant provides services only to its member firms and does not provide audit or other professional services to clients. In exchange for an annual contribution to the Verein, the member firms receive services such as protection of the firmsвАЩ practice names, administrative services, risk management procedures, marketing, and technological support.
4.3 The Complainant and its member firms (each under written license from the Complainant) have been using the DELOITTE & TOUCHE marks since at least 1989. Collectively, the Complainant and its member firms employ more than 150,000 people in over 140 countries, including more than 40,000 in the United States alone.
4.4 In fiscal year 2007, the ComplainantвАЩs member firms achieved a year of record growth, attaining aggregate revenues of USD 23.1 billion, with USD 9.85 billion in the United States. Aggregate global revenues for ComplainantвАЩs member firms in 2008 are projected to be USD 27 billion.
4.5 The Complainant and its member firms currently spend tens of millions of dollars annually in advertisement and promotion of services rendered under the ComplainantвАЩs DELOITTE & TOUCHE marks. Specifically in the United States, in 2006 and 2007, the ComplainantвАЩs U.S. member firm expended USD 2.6 million on advertisements and promotions for the DELOITTE & TOUCHE brand each year. The Complainant and its member firms also regularly receive unsolicited press throughout the world, ranking amongst them, articles published in prominent publications such as Forbes, The New York Times, Fortune and The Wall Street Journal.
4.6 The Complainant and its member firms also receives dozens of awards and accolades annually. By way of example, between 2004 and 2007, Accounting Today magazine ranked the ComplainantвАЩs U.S. member firm first on the Top 100 Tax & Accounting Firms. And in 2006 and 2007, the Complainant and its member firms were ranked first among the seven global tax and accounting firms in an annual survey of accounting professors.
4.7 In connection with its international member firmsвАЩ businesses, the Complainant has obtained service mark registrations incorporating its DELOITTE & TOUCHE marks around the world. The Complainant also owns the following registrations of the DELOITTE & TOUCHE marks in the United States in connection with a variety of goods and services, including the ComplainantвАЩs member firmsвАЩ core accountancy, business management consultation and finance advisory services:
Specification of Goods or Services
September 27, 2005
Computer software in the field of business administration, human resources, financial management, bookkeeping, auditing, accounting, tax analysis, database management and the facilitation of project planning for the design, development, implementation and maintenance of computer and information systems
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Business management; business administration; bookkeeping services; accounting services; account and business auditing services; tax preparation; tax compliance and consultation services; business and government management consulting services; services rendered on assistance and advice on organization and management of businesses or trading functions of commercial or industrial companies; economic research in the attainment of benefits, business interruption and loss determination
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Insurance consultation and advisory services; financial planning, consulting and management services; actuarial services; financial research services, including in the fields of benefits, business interruption and loss determination; real estate investment services; financing services
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Design and development of computer hardware and software; consulting services in the field of computer based information systems for businesses; consulting services in the field of identification, prioritization, analysis, design, development and implementation of computer-based information systems for insurance and other financial service business and other industries; technical consulting and assistance with computer-based information systems and components thereof; litigation support services including investigative audits and financial analyses; computer assurance services relating to the development of security systems and contingency planning for information systems
DELOITTE & TOUCHE
June 19, 1990
Appraisal services in the field of industrial and commercial property appraisals, machinery and equipment appraisals, capital stock valuations appraisals, and financial analysis and consulting services
DELOITTE & TOUCHE
April 15, 1997
Computer programs in the field of business administration, human resources, financial management, bookkeeping, auditing, accounting, tax analysis, database management and the facilitation of project planning for the design, development, implementation and maintenance of computer and information systems and instruction manuals distributed therewith
4.8. The Complainant also maintains an Internet website at <deloitte.com>, providing the technology platform for country-specific websites around the world, including the site of its U.S. member firm. The Complainant and its member firms have maintained global and member firm websites at the <deloitte.com> domain name since 1995.
4.9 Depending on the time when one inputs the disputed domain name, one of several different websites appears, each of which contains lists of hyperlinks, including hyperlinks to third party websites that offer goods and services that are directly competitive with the goods and services of the ComplainantвАЩs member firms.
4.10 On one version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top left side of the page вАЬDELOTTETOUCHE.COMвАЭ, below which is a list of finance-related companies (e.g., Deloitte Touche, American Express, Western Union) and finance-related topics (e.g., Refinancing, Financial Help, Financial Management). On the right side of the page is a scenic image over which ComplainantвАЩs DELOITTE mark appears. When a user clicks on any one of the finance-related companies or finance-related topics on the home page, the user is taken to another page within the site containing вАЬSponsored Results [Company / Topic]вАЭ which are links to the websites of third parties that offer goods or services related to the company or topic, many of which are websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of ComplainantвАЩs member firms (e.g., BNY Mellon Wealth Management, Advisor World, Ameriprise Financial, CAP Advisors LLC).
4.11 On another version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top вАЬDELOTTETOUCHE.COMвАЭ, below which is a list of product and service categories and subcategories. When a user clicks on any one of the product and service subcategories, the user is taken to another page within the site containing вАЬSponsored listingsвАЭ which are links to the websites of third parties that offer goods or services within that subcategory. For example, the first-listed service category on the home page is вАЬFinanceвАЭ, which includes вАЬTaxвАЭ and вАЬInvestmentвАЭ as subcategories. When a user clicks on the вАЬTaxвАЭ and вАЬInvestmentвАЭ subcategories, the user is taken to webpages that provide further links to websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of the ComplainantвАЩs member firms (e.g., TurboTax, JRH Associates, Taxdeal.com, A&R Associates).
4.12 On a third version of the website that appears when a user types in the disputed domain name, a web page appears that reads at the top of the page вАЬDELOTTETOUCHE.COM What you need, when you need itвАЭ, below which are two columns of вАЬRelated SearchesвАЭ. These columns contain a list of finance-related topics (e.g., Finance, Business, Accounting Software). When a user clicks on any one of these topics, the user is taken to another page within the site containing вАЬSponsored listingsвАЭ which are links to the websites of third parties that offer goods or services related to the topic, many of which are websites for third parties that offer tax, accounting and investment goods and services that are directly competitive with the services of the ComplainantвАЩs member firms (e.g., Quick Books, HSBC Direct, Findaccountingsoftware.com, GMAC Bank).
4.13 Regardless of which of these websites appears at the disputed domain name, consumers that type in the disputed domain name when looking for ComplainantвАЩs services or information concerning the ComplainantвАЩs services are led away from the ComplainantвАЩs services to those of its competitors by virtue of its receipt of the вАЬclick-throughвАЭ revenues generated by such link-laden domain name parking sites.
4.14 Upon learning of the above use of the disputed domain name, the Complainant sent a letter to the registrant of record вАУ Moniker Privacy Services вАУ demanding that the infringing conduct cease immediately and that the disputed domain name be transferred to the Complainant, to which the Complainant did not receive a reply.
5. PartiesвАЩ Contentions
The Complainant contends as follows:
(a) The disputed domain name is confusingly similar to the ComplainantвАЩs marks, as <delottetouche.com> is practically identical to the ComplainantвАЩs DELOITTE & TOUCHE mark, but for the ampersand and the letter вАЬiвАЭ. The Complainant argues that:
(i) when Internet users looking for legitimate services offered by the Complainant mistakenly type the disputed domain name into the address bar of their Internet browser (i.e., by misspelling / mistyping DELOITTE and omitting the letter вАЬiвАЭ), they are led to a link-laden website, from which numerous third party websites, including sites of the ComplainantвАЩs competitors, may be accessed;
(ii) the Respondent seeks to capitalize on a classic form of typosquatting by omitting the letter вАЬiвАЭ from the ComplainantвАЩs DELOITTE & TOUCHE mark (an ampersand cannot be used in a domain name and is typically omitted from domain names for company names that incorporate one) so that an Internet user who makes this typographical error when typing in ComplainantвАЩs website address will be diverted to RespondentвАЩs site instead.
(b) The Respondent has no rights or legitimate interest in the disputed domain name. In support thereof, the Complainant relies on the following factors:
(i) 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 the DELOITTE & TOUCHE mark;
(ii) the disputed 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 right or legitimate interest of the Respondent;
(iii) the Respondent registered the disputed domain name for the purpose of diverting traffic to web-pages that have no relationship to the Complainant. In fact, many of the goods and services offered on such web pages compete with the ComplainantвАЩs services. On information and belief, the Respondent has profited from diverting Internet traffic intended for the ComplainantвАЩs client to the sites of these third parties by generating click-through revenue.
(c) The Registrant registered and is using the disputed domain name in bad faith. In this regard, the Complainant relies on the following circumstances:
(i) the DELOITTE & TOUCHE marks enjoy widespread recognition. It is therefore inconceivable that the Respondent was unaware of the DELOITTE & TOUCHE marks when it registered the disputed domain name. Given the fame of the DELOITTE & TOUCHE marks and the fact that the disputed domain name is so obviously connected with ComplainantвАЩs famous marks, the RespondentвАЩs bad faith may be presumed;
(ii) the RespondentвАЩs attempt to mislead Internet users by operating a website at a domain name consisting of a typographical error of the ComplainantвАЩs DELOITTE mark is a form of typosquatting that has been recognized as bad faith use of a domain name under the UDRP;
(iii) the format of the RespondentвАЩs website at the disputed domain name вАУ with links leading visitors to other commercial sites вАУ strongly suggests that the Respondent is obtaining вАЬclick-throughвАЭ revenue from the disputed domain name. This exploitation of the ComplainantвАЩs goodwill for financial gain by creating confusion demonstrates the RespondentвАЩs bad faith. Moreover, the fact that many of the featured links compete directly with the ComplainantвАЩs services is further evidence of the RespondentвАЩs bad faith.
The Respondent did not reply to the ComplainantвАЩs contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
6.1. Identical or Confusingly Similar
This Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the marks DELOITTE & TOUCHE and DELOITTE. These marks have been used extensively by the Complainant and its worldwide member firms since at least 1989. It is well regarded that the Complainant and its member firms constitute one of the worldвАЩs вАЬBig 4вАЭ accounting firms.
In fact, the Complainant had filed UDRP proceedings previously and successfully recaptured domain names incorporating words confusingly similar to the DELOITTE & TOUCHE marks. In one such proceeding, in rendering its decision, the panelist explained that the Complainant вАЬis an association of firms providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names вАШDeloitte Touche TohmatsuвАЩ and вАШDeloitte & Touche.вАЩ These names are frequently shortened to вАШDeloitte.вАЩ The ComplainantвАЩs member firms constitute one of the вАШbig 4вАЩ international accountancy practicesвА¶вАЭ (see Deloitte Touche Tohmatsu v. Henry Chan,
WIPO Case No. D2003-0584 (where the domain name <www.deloitt.com> was found confusingly similar to the ComplainantвАЩs mark DELOITTE).
This Complaint revolves around the registration of the domain name <delottetouche.com>. When comparing this domain name with the DELOITTE & TOUCHE mark owned by the Complainant, one will note that the only difference between the two is the omission of the ampersand and the letter вАЬiвАЭ. Ampersands are not permitted to form domain names and the omission of the letter вАЬiвАЭ does not change the confusing similarities between the ComplainantвАЩs marks and the relevant domain name.
Intentional misspellings of domain names are not uncommon. These acts are usually referred to as вАЬtyposquattingвАЭ. Typosquatting in its various forms вАЬhas been universally condemned in numerous URDP decisionsвАЭ and is sufficient, by itself, to establish confusing similarity (see Edmunds.com, Inc. v. Triple E Holdings Limited.,
WIPO Case No. D2006-1095; Gaetano, Inc. d/b/a Lisa Curran Swim v. Texas International Property Associates,
WIPO Case No. D2007-1428).
Given the ComplainantвАЩs rights in the DELOITTE & TOUCHE mark and the confusing similarity thereof with the disputed domain name, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.2. Rights or Legitimate Interests
The ComplainantвАЩs assertions were not rebutted by the Respondent to indicate whether it had rights or legitimate interests to the disputed domain name.
There is nothing in the RespondentвАЩs name to indicate that it is commonly known by the domain name. The Complainant also dispelled any possibility of having licensed, consented or permitted the use of the DELOITTE & TOUCHE mark or the disputed domain name by the Respondent.
The Complainant adduced convincing evidence to suggest that the website which is displayed when one types in the disputed domain name is intended to generate click-through revenue by diverting Internet traffic from the ComplainantвАЩs website. There does not, therefore, appear on the present record to be any grounds that the Panel can find to support a counter-argument by the Respondent that the disputed domain name is being used for legitimate non commercial or fair use (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC,
WIPO Case No. D2000-0102 where it was held that a multitude of links to e-commerce websites can be reasonably presumed to demonstrate commercial benefit).
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registration and Use in Bad Faith
It appears, on a balance of probabilities, that the Respondent generates Internet traffic (and commercial gain resulting from the flow of such traffic) from the confusion which arises due to the similarities between the ComplainantвАЩs well-known DELOITTE & TOUCHE mark and the disputed domain name. This suggests opportunistic bad faith on the part of the Respondent.
In Digital Spy Limited v. Moniker Privacy Services and Express Corporation,
WIPO Case No. D2007-0160, the Panel held that вАЬ[r]egistering a domain name with knowledge of another companyвАЩs rights in the name, and with intention to divert traffic is evidence of bad faith.вАЭ In Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163, it was also held that the domain name вАЬ[<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.вАЭ
In Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc.,
WIPO Case No. D2001-1020, a finding of bad faith was also made based on a website format used to generate вАЬclick-throughвАЭ revenue for the Registrant and in ACCOR v. Steve Kerry / North West Enterprise, Inc.,
WIPO Case No. D2006-0649, the use of a confusingly similar domain name to attract Internet users to a website with links to sites offering goods similar to the complainantвАЩs goods established bad faith.
Based on the evidence adduced, this Panel also concludes that the disputed domain name was calculatively misspelled by the Respondent in order to take advantage of typographical errors made by Internet users. This is a form of typosquatting that has been recognized as bad faith use of a domain name under the UDRP. Where, as here, вАЬa Domain Name constitutes a common misspelling of a protected mark, вАШtyposquattingвАЩ has often been held to be вАШinherently parasitic and of itself evidence of bad faithвАЩ.вАЭ (see American Funds Distributors Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0994).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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, <delottetouche.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: December 10, 2008