Deloitte Touche Tohmatsu v. Henry Chan

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deloitte Touche Tohmatsu v. Henry Chan

Case No. D2003-0584

1. The Parties

The Complainant is Deloitte Touche Tohmatsu, Zurich, Switzerland, represented

by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Henry Chan, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <deloitt.com> ("the domain name")

is registered with iHoldings.com Inc. d/b/a DotRegistrar.com ("the Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on July 24, 2003. The Center transmitted its standard request for

registrar verification to the Registrar by email on July 28, 2003.

The Registrar confirmed by email of the same date that it was the Registrar,

that the Respondent was the current registrant, that the Uniform Domain Name

Dispute Resolution Policy (the "Policy") applied, that the domain

name would remain locked during this proceeding, and that the registration agreement

was in English and included a submission to the jurisdiction of the courts at

the Registrar’s principal office. The Registrar also provided the Respondent’s

contact details on its Whois database. Although the Registrar stated that it

had not received the Complaint, the Complaint itself confirms that it was sent

to the Registrar by courier and email. If there has been any deficiency in this

regard, the Panel waives it under its general powers pursuant to the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 10.

The Center checked the Complaint on July 31, 2003, for compliance

with the formal requirements of the Policy, the Rules, and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules"). The Center did not identify any deficiency.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response

was August 20, 2003. The Respondent did not submit any response by

that date and the Center notified the Respondent’s default on August 21, 2003.

The Center appointed Jonathan Turner as the sole panelist in this matter on

September 1, 2003. The Panel submitted the Statement of Acceptance

and Declaration of Impartiality and Independence, as required by the Center

to ensure compliance with the Rules, paragraph 7.

Having reviewed the file, the Panel is satisfied that the Complaint complied

with applicable formal requirements (save possibly as indicated and waived above),

was duly served on the Respondent, and has been submitted to a properly constituted

Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is an association of firms providing accountancy, auditing,

management consultancy, tax advice and other services in numerous countries

around the world under the names "Deloitte Touche Tohmatsu" and "Deloitte

& Touche." These names are frequently shortened to "Deloitte."

The Complainant’s member firms constitute one of the "big 4" international

accountancy practices, employ more than 119,000 people in over 140 countries

and attained total annual revenues of US$12,5 billion in 2002. The Complainant

has registered "DELOITTE TOUCHE TOHMATSU," "DELOITTE &

TOUCHE" and "DELOITTE" as trademarks in a number of countries.

The Complainant maintains a website at "www.deloitte.com" and many

of its member firms have websites at "www.deloitte." followed by the

relevant ccTLD (with or without a generic SLD). These include the website of

the Hong Kong firm at "www.deloitte.com.hk."

The domain name is directed to a search engine and portal at "www.dp.information.com"

operated by an entity called "domainsponsor.com." This provides links

to sponsored websites on a variety of topics, including a page entitled "Deloitt

Consulting" containing numerous sponsored links to websites of entities

not connected with the Complainant. The "www.dp.information.com" website

also causes numerous "pop-up" and "pop-under" advertisements

to be displayed when it is accessed. Domainsponsor.com offers a revenue program

which pays domain name owners "50% of all revenues generated from searches,

popunders, popups, and exit popups" in respect of users directed to its

website through the participants domain name.

The Respondent currently owns over 18,000 domain names, many of which are based

on well-known brand or trading names, and a number of which correspond to mistypings

which may be expected of such names. These names are also directed to the "dp.information.com"

website. The Respondent has been found to have registered and used domain names

in bad faith by at least three other administrative panels under the Policy.

The Respondent’s contact address given in the original registration was in Hong Kong,

but was subsequently changed to Nassau in the Bahamas.

5. Parties’ Contentions

The Complainant contends that the domain name is confusingly similar to its

mark "DELOITTE," that the Respondent has no rights or legitimate interests

in respect of the domain name, and that it was registered and is being used

in bad faith to profit from the diversion of internet users seeking information

about the Complainant and its members to "domainsponsor.com"’s website

at "www.dp.information.com."

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

6. Discussion and Findings

In accordance with paragraph 4 of the Policy, the Complainant must prove (A)

that the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; (B) that the Respondent has no rights

or legitimate interests in respect of the domain name; and (C) that the domain

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

A. Identical or Confusingly Similar to Mark in which Complainant has Rights

The Panel is satisfied that the Complainant has registered and unregistered

rights in the marks "DELOITTE" and "DELOITTE & TOUCHE."

Although the Complainant has only registered "DELOITTE" in Spain,

Brazil and Uruguay, these registrations are relevant since the Complainant’s

member firms operate throughout the world and people in these countries may

well seek information about the Complainant’s member firms and their services

on the Internet. In any case, the Complainant’s member firms clearly have goodwill

and reputation under the name "DELOITTE" in numerous countries, including

Hong Kong, where the Respondent gave his address in the original registration

of the domain name. Although the relationship between the Complainant and its

member firms is not fully explained in the Complaint, the Panel accepts that

the Complainant has common law rights within the meaning of the first requirement

of the Policy arising from its members’ use of the name "DELOITTE"

in Hong Kong and other countries.

"DELOITTE & TOUCHE" has been registered as a trademark by the

Complainant in a wide range of countries, and the Panel further accepts that

the Complainant has common law rights by virtue of its member firms’ use of

this mark in many countries.

The Panel is also satisfied that the domain name is confusingly similar to

both "DELOITTE" and "DELOITTE & TOUCHE." "Deloitte"

is an obvious and widely used abbreviation of "Deloitte & Touche"

and a distinctive part of this mark. Confusion between the domain name and "Deloitte"

may occur, in particular, due to mistyping or misspelling.

Accordingly, the first requirement of the Policy is met.

B. Rights or Legitimate Interests of Respondent

The Panel considers that the Respondent has no rights or legitimate interests

in respect of the domain name. It appears that the only use made of the disputed

domain name has been to direct Internet users to "domainsponsor.com"’s

website at "www.dp.information.com." The use of Deloitt Consulting

on a page linked to that website does not constitute a bona fide offering

of goods or services giving rise to any right or legitimate interest.

The second requirement of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is also satisfied that the domain name was registered and is being

used in bad faith. The uncontested evidence indicates that it was registered

and has been used in order to divert internet users seeking information about

the Complainant’s member firms and their services to "domainsponsor.com"’s

website at "www.dp.information.com," and to share in revenues obtained

from the diverted traffic. The Respondent is evidently carrying on an operation

of plundering the reputation of well-known marks in this way on a large scale.

This exploitation of the reputations of the Complainant’s member firms and others

is an egregious abuse of their rights.

The "Deloitt Consulting" page linked to the "dp.information.com"

website may create a likelihood of confusion as to source, sponsorship, affiliation

or association, and hence may be specifically covered by the fourth example

of bad faith identified in paragraph 4 of the Policy. However, even if

the Respondent’s conduct is not precisely covered by any of the non-exhaustive

examples of bad faith in this paragraph of the Policy, it is plainly conduct

of a kind encompassed by the concept of "bad faith" in the Policy.

The third requirement of the Policy is met.

7. Decision

For the above reasons, in accordance with Paragraphs 4(i) of the Policy and

15 of the Rules, the Panel decides that the domain name <deloitt.com>

should be transferred to the Complainant.

Jonathan Turner

Sole Panelist

Dated: September 7, 2003

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