Stichting BDO v Name Redacted

WIPO Case No. D2023-1380

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Stichting BDO v. Name Redacted

Case No. D2023-1380

1. The Parties

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

The Respondent is Name Redacted[1].

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <billing-bdo.com> (the “Domain Name”) 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 30, 2023. On March 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2023, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the 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 April 3, 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 April 6, 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”).

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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 April 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2023.

The Center appointed Karen Fong as the sole panelist in this matter on May 23, 2023. 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 an international network of financial services firms providing services in the fields of accounting, taxation, consulting and advice and other professional services under the name BDO. It is the owner of the BDO trade mark and company name. The Complainant’s network dates back to 1963. It is ranked amongst the top accounting firms in the United Sates and the rest of the world. Its average revenue is more than USD 2.4 billion in the United States and USD 13 billion globally.

The BDO trade mark is registered in over 173 countries. The Complainant has submitted in evidence several trade mark registrations including United States trade mark registration No 4,854,142 for BDO with a registration date of November 17, 2015 (individually and collectively, the “Trade Mark”). The Trade Mark is recognized by various directories as a leading global brand.

The Complainant has a portfolio of domain names including the domain name of its official website

<bdo.com>.

The Domain Name was registered on February 17, 2023. It is not connected to an active website. The
Respondent has used the domain name as an email address to impersonate the Complainant by requesting
from a contact/customer of the Complainant payment of a fake invoice bearing the Trade Mark and the

Complainant’s logo.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name has been registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, in correspondence received by the Center on April 14, 2023, a party named as the Respondent stated that: “I received a letter from you dated April 12th. There has been a filed against me regarding a domain name. Can you please let me know what the domain name is.”

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

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(i)        the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

WIPO Overview 3.0”)).

In this case, the Domain Name consists of the Trade Mark in its entirety together with the word “billing” and a on Selected UDRP Questions, Third Edition (“the
hyphen as its prefix. The addition of this word and a punctuation mark do not prevent a finding of confusing
similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy,
it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”.

The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:

(i)

before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, of goods or services; or

(ii)       the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii)      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in
a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a
complainant is required to make out a prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made out, the burden of production shifts to the respondent to
come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the
domain name. If the respondent does not come forward with such allegations and relevant evidence of
rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on

the complainant.

The Complainant contends that there is no evidence that the Respondent is commonly known by the Domain
Name nor has any trade mark rights to the Trade Mark. Further, it has not authorised, licensed, sponsored,

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or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. email address to perpetrate a financial fraud and phishing scam. Such illegal activities can never amount to bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.

prima facie

The Panel finds that the Complainant has made out a case, a case calling for an answer from the relation to the Domain Name, and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the second element is met.

D. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith.

The Panel is satisfied that the Respondent was aware of the Trade Mark when she registered the Domain
Name given the reputation of the Trade Mark and the Domain Name has been used as an email address as
a phishing scam by impersonating the Complainant; it therefore seems implausible that the Respondent was

unaware of the Complainant when she registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s clear targeting of the Complainant’s Trade Mark to perpetrate a fraud are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above, and the Panel finds that registration is in bad faith.

The Domain Name is also being used in bad faith. Whilst the Domain Name directs to an inactive page, it is being used as an email address for the purpose of a phishing scam. Section 3.4 of WIPO Overview 3.0 states as follows:

“Panels have held that the use of a domain name for purposes other than to host a website may constitute
bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some
such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases
involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or
confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices
by the complainant’s actual or prospective customers.”

The Complainant has provided evidence of an attempt by the Respondent to solicit payment of a fraudulent invoice by using the Domain Name as an email address. This falls clearly within the actions described above. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith.

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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 Domain Name, <billing-bdo.com>, be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: June 12, 2023

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.