Stichting BDO v kelly halbert, libertyautocity

WIPO Case No. D2024-4755

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Stichting BDO v. kelly halbert, libertyautocity

Case No. D2024-4755

1. The Parties

Complainant is Stichting BDO, the Netherlands (Kingdom of), represented by McDermott Will & Emery LLP,

United States of America (“United States”).

Respondent is kelly halbert, libertyautocity, United States.

2. The Domain Name and Registrar

The disputed domain name <bbddo.com> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, amended Complaint on November 27, 2024.

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 20, 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 (Domain Admin, Privacy Protect, LLC
(PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to
Complainant on November 25, 2024, providing the registrant and contact information disclosed by the
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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 24, 2024.

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The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 4, 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

Complainant is a company organized under the laws of the Netherlands (Kingdom of) that is active in the financial industry, providing services in the fields of accounting, taxation, consulting and other financial advices.

Complainant has provided evidence that it enjoys trademark rights in relation to its company name and brand

BDO through, inter alia, the following trademark registrations:

- word trademark BDO, United States Patent and Trademark Office (“USPTO”), registration number:

4,854,142, registration date: November 17, 2015, status: active;

- word/design trademark BDO, USPTO, registration number: 2,699,812, registration date: March 25, 2003, status: active.

Moreover, Complainant has demonstrated to own since 1995 the domain name <bdo.com> which resolves to Complainant’s main website at “ used to promote Complainant’s products and related services in the financial industry internationally.

Respondent, according to the Registrar verification, is located in the United States. The disputed domain name was registered on October 23, 2024, and resolves to a typical parking page operated by the Registrar. Complainant, however, has demonstrated that at some point before the filing of the Complaint, e.g., on October 23, 2024, fraudulent emails were sent under the disputed domain name obviously in an attempt to direct payment of Maryland state tax payments to an “alternative payment method” and providing payment information, presumably in order to misdirect tax payments to Respondent.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the ever since in connection with a wide range of services within the financial industry.

disputed domain name. Notably, Complainant contends that its roots date back to 1963 and that it currently
has over 111,000 global employees in more than 1,800 offices across 164 countries worldwide. Moreover,

Complainant submits that the disputed domain name is confusingly similar to Complainant’s famous BDO trademark, as it contains a misspelling and typo-squatted version thereof, intended to create confusion, e.g., with Complainant’s “@bdo.com” email address. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant’s BDO trademark is not a generic or descriptive term in which Respondent may have an interest, (2) Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s BDO trademarks or any domain names incorporating such trademarks, (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but rather is sending fraudulent emails thereunder, directing payment of Maryland state tax payments to an “alternative payment method” and providing payment information presumably to misdirect tax payments to Respondent. Finally, Complainant argues that Respondent has

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registered and is using the disputed domain name in bad faith since (1) given Complainant’s worldwide
reputation and the ubiquitous presence of its BDO trademarks, Respondent was or should have been aware
of such trademarks long prior to registering the disputed domain name, (2) furthermore, Respondent is not
using the disputed domain name for any legitimate purpose, but to create a corresponding email address

and to use such email address to pose as Complainant and to perpetrate a financial fraud/phishing scam.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which Complainant has rights; and

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

First, 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 Complainant’s BDO 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.

Complainant has shown rights in respect of its BDO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, the entirety of such trademark is reproduced within the disputed domain name, though in a misspelled/typo-squatted version by doubling the letters “b” and “d”. Accordingly, the disputed domain name is confusingly similar to Complainant’s BDO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The fact that the disputed domain name obviously includes an intentional misspelling of Complainant’s BDO trademark is not at all inconsistent with such finding of confusing similarity. UDRP panels agree that intentionally misspelled domain names are even considered to be confusingly similar under the UDRP (see WIPO Overview 3.0, section 1.9).

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

B. Rights or Legitimate Interests

Second, paragraph 4(c) of the Policy provides a list of circumstances in which 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

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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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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 particular, Respondent has not been authorized to use Complainant’s BDO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “bdo” and/or “bbddo” on its own. To the contrary, Complainant has demonstrated that, at some point before the filing of this Complaint, e.g., on October 23, 2024, fraudulent emails were sent under the disputed domain name obviously in an attempt to direct payment of Maryland state tax payments to an “alternative payment method” and providing payment information, presumably in order to misdirect tax payments to Respondent. Such use of the disputed domain name neither qualifies as a bona fide offering of goods or services nor as using the disputed domain name for a legitimate noncommercial or fair purpose. In this context, UDRP panels have held that the use of a domain name for illegitimate/illegal activity (here, phishing) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

Third, 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.

In the present case, the disputed domain name is an obvious and intentional typo-squatted version of Complainant’s undisputedly well-known BDO trademark, which, in turn, is a clear indication that Respondent was fully aware of Complainant’s rights in its BDO trademark when registering the disputed domain name and that the latter clearly is directed to such trademark. Moreover, using the disputed domain name for illegal phishing activities by sending fraudulent emails under it obviously in an attempt to direct payment of Maryland state tax payments to an “alternative payment method” and providing payment information, presumably to misdirect tax payments to Respondent for illegitimate financial gain, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusion with Complainant’s BDO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s phishing emails. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy. Moreover, UDRP panels have long held that the use of a domain name for illegitimate/illegal activity (here, phishing) constitutes bad faith. WIPO Overview 3.0, section 3.4.

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

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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, <bbddo.com>, be transferred to Complainant.

/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: January 17, 2025