Stichting BDO v Curtis Bradley

WIPO Case No. D2023-1000

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Stichting BDO v. Curtis Bradley

Case No. D2023-1000

1. The Parties

The Complainant is Stichting BDO, Netherlands, represented by McDermott Will & Emery LLP, United States of America (“United States”).

The Respondent is Curtis Bradley, United States

2. The Domain Name and Registrar

The disputed domain name <payments-bdo.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2023.
On March 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 7, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 9,
2023, 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

March 13, 2023.

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 March 16, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 5, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 13, 2023.

The Center appointed Cherise Valles as the sole panelist in this matter on April 25, 2023. The Panel finds

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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, together with members of the international BDO network of independent member firms, is an internationally renowned network of public accounting firms that dates back to 1963. The Complainant provides services in the fields of accounting, taxation, consulting and advice and other professional services.

The Complainant claims that it owns over 350 trademark registrations and applications in 173 territories for
various BDO marks, dating back to 2003. The Complainant has several trademark registrations in the United

States.

The Complainant registered the <bdo.com> domain name on February 28, 1995.

The disputed domain name was registered on February 24, 2023. At the time of the Decision, the disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules has been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered BDO trademark, in
light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad
faith. The mere fact of registration of a domain name that is confusingly similar or identical to a
famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith
registration and use. Furthermore, the Respondent’s failure to use the disputed domain name for a
legitimate purpose is clear evidence of bad faith.

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The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In terms of paragraph 4(a) of the Policy, for a Complaint to succeed, the Complainant must prove each of the following elements:

(i)        the disputed domain name 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.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have relevant rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the BDO trademark in its entirety with the addition of the word “payments”, and a hyphen, before the trademark BDO. Given the Complainant’s trademark registrations as detailed above, the Panel finds that the Complainant has established its trademark rights in BDO for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise)

would not prevent a finding of confusing similarity under the first element”.

Thus, the inclusion of the word “payments”, and a hyphen, in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s BDO trademark.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top-Level Domain ("TLD") into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration

requirement and, as such, is disregarded under the first element [of the] confusing similarity test”. In the

present case, the TLD “.com” is disregarded under the first element of the confusing similarity test.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the
Complainant’s registered trademark and that the Complainant has met its burden with respect to paragraph

4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the

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Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain

name or a name corresponding to the domain name in connection with a bona fide offering of goods or
services; or

(ii)       you (as an individual, business or other organization) have been commonly known by the domain

name, even if you have acquired no trademark or service mark rights; or

(iii)      you are making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences from this failure, where appropriate, in accordance with paragraph 14(b) of the Rules.

It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case under the second element of the Policy that the respondent has no rights or legitimate interests in the domain name concerned (See, for example, Paris Saint-Germain Football v. Daniel Macias Barajas, International Camps Network, WIPO Case No. D2021-0019; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012 and the discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s BDO trademark in any manner, including in, or as part of, the disputed domain name. The Complaint makes clear that the “Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s BDO [m]arks or any domain names incorporating the BDO [m]arks”.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as it resolves to a page displaying an Internet browser message stating “This site can't be reached” (Annex L to the Complaint).

Furthermore, the nature of the disputed domain name that incorporates the BDO trademark in its entirety
with the addition of the word “payments” and a hyphen before the BDO trademark, carries a risk of implied
affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or
endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. The Panel further notes the
Complainant’s assertion that the term “payments” suggests that the disputed domain name can relate to the
Complainant’s accounting or billing department.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

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C. Registered and Used in Bad Faith

For this element, the Complainant is required to prove that the disputed domain name was registered and
that it was used in bad faith. The term “bad faith” is “broadly understood to occur where a respondent takes
unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview
3.0. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by
the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:

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

(ii)       the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

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

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The disputed domain name currently resolves to an inactive page (Annex L to the Complaint). The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate under the Policy. Prior UDRP panels have held that the incorporation of a famous mark in a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.

The Respondent has not participated in the administrative proceeding and has not answered the Complainant’s contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration and use of the disputed domain name in the face of the Complainant’s contentions can be regarded as an indicator of registration and use in bad faith (See, section 3.3 of the WIPO Overview 3.0: panelists have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name.

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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 <payments-bdo.com> be transferred to the Complainant.

/Cherise Valles/
Cherise Valles
Sole Panelist
Date: May 9, 2023