Grant Thornton UK LLP v Nadine Gruaut
WIPO Case No. D2024-5063
•10-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Grant Thornton UK LLP v. Nadine Gruaut
Case No. D2024-5063
1. The Parties
The Complainant is Grant Thornton UK LLP, United Kingdom (“UK”), represented by Taylor Wessing LLP,
UK.
The Respondent is Nadine Gruaut, France.
2. The Domain Name and Registrar
The disputed domain name <granthornton-law.com> is registered with OVH (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2024. On December 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2024, 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 (Redacted For Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2024, providing the registrant and contact information disclosed by the Registrar, and confirming the language of the Registration Agreement as French, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on December 11, 2024.
On December 18, 2024, the Center informed the parties in French and English, that the language of the registration agreement for the disputed domain name is French. On December 19, 2024, the Complainant filed a re-amended Complaint requesting English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.
The Center verified that the Complaint together with the re-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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2025.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on January 27, 2025. 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, Grant Thornton UK LLP, is a member of the Grant Thornton professional services network of independent accounting and consulting firms and provides, in particular, accounting, tax, auditing, outsourcing and business risk advisory services. The Grant Thornton network altogether employs 73’000 people and is active in 149 countries.
The Complainant holds the UK word trademark GRANT THORNTON, UK00001298206, which claims goods
and services in classes 16, 35 and 36. This trademark was filed on January 20, 1987, and registered on
January 11, 1991.
The disputed domain name, <granthornton-law.com> was registered on November 21, 2024, and is clearly posterior to the GRANT THORNTON trademark of the Complainant. The disputed domain name resolves to an inactive webpage but has been used by the Respondent as an e-mail address for messages sent to third parties in the name of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name, <granthornton-law.com> is confusingly similar to its GRANT THORNTON trademark.
Furthermore, the Complainant states that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name, that it does not resolve to an active website and that the Respondent has used it in a fraudulent e-mail scam.
Lastly, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith, even though it does not resolve to any active website, in particular because the Respondent knew or should have known of the Complainant’s trademark, which is proven by the fact that they sent fraudulent emails to third parties, presenting themselves as a company of the Complainant's group.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
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(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, the language of the administrative proceeding is the language of the registration agreement(s), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
| appears to have been made in French. The Complainant has therefore requested that English be | ln the case at hand, the Complainant filed its Complaint in English even though the registration agreement required to provide a French translation of the Complaint. |
| Several scenarios may warrant proceeding in another language than that of the registration agreement, e.g., if it is proven or highly probable that the Respondent can understand the language of the complaint and/or if it would appear unfair to cause any delays in the proceedings by ordering the Complainant to translate the | |
| Complaint. | |
| The panel notes that the Respondent has not filed any response and therefore has not expressed any views on the language of the proceedings. ln light of these circumstances and taking into account the email using the disputed domain name sent by the Respondent in English, it seems fair and appropriate to accept the | |
| complaint in English and to carry on these proceedings in English. | |
| B. Identical or Confusingly Similar | |
| It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. | |
| The trademark put forward by the Complainant demonstrates that the Complainant has rights in GRANT THORNTON. | |
| Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the Complainant’s trademarks. There is no requirement of similarity of goods and/or services. | |
| The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the Complainant’s trademark is recognizable within the disputed domain name. A domain name which consists of an obvious misspelling of a trademark, as in the present case, is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. | |
| The other element of the disputed domain name, i.e., the element “-law” does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. As far as the generic Top-Level Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity. |
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The Panel thus finds the first element of the Policy has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
In addition, the Complainant has proven that the Respondent has used the disputed domain name in the context of a phishing and impersonation scheme. Panels have held that the use of a domain name for illegal activity, such as phishing and/or impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
The Panel thus finds the second element of the Policy has been established.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorisation to use the Complainant’s trademark.
The Respondent registered the disputed domain name well after the Complainant’s trademark was in use. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when registering the disputed domain name. This Panel considers that the disputed domain name for itself is a strong indication that the Respondent was aware of the Complainant’s trademark GRANT THORNTON, as it seems more than unlikely that the Respondent would have created - randomly - the disputed domain
name that is almost identical with the Complainant’s distinctive trademark (cf. Motul v. Contact Privacy lnc.
Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632).
Any remaining doubt in this respect can be excluded when considering the fact that the Respondent, after only a few weeks following registration of the disputed domain name, sent emails to a third-party requesting payment of USD 178,226 in the name of the Complainant. This shows indeed that the Respondent registered the disputed domain name in view of a fraudulent scheme, which implies that it was well aware of the Complainant’s company and trademark.
Previous UDRP panels have recognized that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, and such behavior is manifestly considered evidence of bad faith.
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This Panel therefore holds the view that the disputed domain name was registered and is being used in bad faith. The Complainant therefore has established registration and use of the disputed domain name in bad faith.
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 <granthornton-law.com> be transferred to the Complainant.
/Lorenz Ehrler/
Lorenz Ehrler
Sole Panelist
Date: February 10, 2025
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