Grant Thornton UK LLP v Tony Aldo

WIPO Case No. D2024-4745

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Grant Thornton UK LLP v. Tony Aldo

Case No. D2024-4745

1. The Parties

The Complainant is Grant Thornton UK LLP, United Kingdom, represented by Taylor Wessing LLP, United

Kingdom.

The Respondent is Tony Aldo, Israel.

2. The Domain Name and Registrar

The disputed domain name <grant-thornton-partner.com> is registered with INWX GmbH & Co. KG (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18,
2024. On November 19, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 21, 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 November 21,
2024, 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

November 22, 2024.

The Center verified that the Complaint together with the 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2024.

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The Center appointed Felipe Claro as the sole panelist in this matter on January 2, 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 is a professional services network of independent accounting and consulting firms providing, amongst others, accounting, tax, auditing, outsourcing and business risk advice. These member firms, including the Complainant, are independent legal entities, and operate with 73,000 people in 149 markets.

The network operates under the trademark GRANT THORNTON. The name originates from a merger between Alexander Grant & Co. and Thornton Baker, with the name Grant Thornton being adopted in 1986.

The Grant Thornton brand is well known, and the combined global revenue of the network's member firms was USD 7.5 billion in 2023. The network firms have been consistently ranked among the world's top brands for many years. Grant Thornton network has received many accolades in recent years.

The Complainant owns the following registered trademark, among others:

1.        UK Registration No. UK00001298206, GRANT THORNTON, January 11, 1991, classes 16, 35 and

36.  

The Complainant also owns the domain name <grantthornton.com>, among others.

The disputed domain name resolves to a parking webpage of the Registrar. It has been used to send fraudulent emails using the email address “[…]@grant-thornton-partner.com”.

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 Respondent is attempting to aggregate illegitimate online traffic with the disputed domain name for fraudulent means, to cause confusion and to capitalize on notorious brand recognition. The Respondent’s intention is to target the Complainant’s customers with a nearly identical domain name to its famous trademark GRANT THORNTON. The addition of the descriptive portion “partner” does not change the above facts.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard the Panel makes the following specific findings.

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A. 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 Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the term “partner” may bear on assessment of the second and third elements, the Panel finds the addition of such descriptive term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. 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.

The disputed domain name was registered many years after the registration of the Complainant's well- known GRANT THORNTON trademark, and it does not resolve to an active website.

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 the present case, the Complainant has provided evidence that the disputed domain name was used to send at least one fraudulent email encouraging third parties to divulge their personal information. Panels have held that the use of a domain name for illegal activity like phishing or impersonation, can never confer

rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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In the present case, the Panel notes that the Respondent registered the disputed domain name primarily for the purpose of using it to target third parties by way of fraudulent email scams to impersonate the Complainant and prompt the third parties into sharing personal information. This opportunistic attraction, for commercial gain, creates confusion with the Complainant's GRANT THORNTON trademark.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity like phishing or impersonation constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 <grant-thornton-partner.com> be transferred to the Complainant.

/Felipe Claro/ Felipe Claro Sole Panelist Date: January 16, 2025