DECISION

 

Stichting BDO v. David Kirk

Claim Number: FA2207002004006

 

PARTIES

Complainant is Stichting BDO ("Complainant"), represented by Christina L. Martini and Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is David Kirk ("Respondent"), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bdo-global.us>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 13, 2022; the Forum received payment on July 13, 2022.

 

On July 13, 2022, NameCheap, Inc. confirmed by email to the Forum that the <bdo-global.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On July 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bdo-global.us. Also on July 13, 2022, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides accounting and other professional services under the BDO mark, and has used the mark for such services for nearly 60 years. Complainant has 88,000 global employees in 1,617 offices in 167 countries around the world. Complainant owns trademark registrations and applications for BDO and related marks in many jurisdictions, including a United States registration for BDO in standard character form. Complainant asserts that the BDO mark has become famous globally as a result of extensive use and promotion, citing various examples of its reputation and recognition as a leading global brand.

 

Respondent registered the disputed domain name <bdo-global.us> in April 2022. The domain name does not resolve to a website. Complainant asserts that there is no reason for Respondent to have registered the domain name other than to trade off the reputation and goodwill of Complainant's mark. Complainant states that Respondent is not commonly known by the domain name, is not associated or affiliated with Complainant, and is not authorized or permitted to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <bdo-global.us> is confusingly similar to its BDO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3)  the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Disputed Resolution ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <bdo-global.us> incorporates Complainant's registered BDO trademark, adding a hyphen, the generic term "global," and the ".us" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Leidos, Inc. v. Chris Moore / JCI Group, FA 1959988 (Forum Sept. 14, 2021) (finding <leidosglobal.us> confusingly similar to LEIDOS); Stichting BDO v. Bado Unila, D2018-1011 (WIPO June 27, 2018) (finding <bdo-thailand.com> confusingly similar to BDO). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to have made any active use of the domain name, nor to have engaged in preparations for such use, suggesting that Respondent lacks rights or legitimate interests in the domain name. See, e.g., Morgan Stanley v. Darshan Nenuji / Yuvii Consultancy, FA 2000719 (Forum July 20, 2022) (finding lack of rights or interests in similar circumstances); Stichting BDO v. Contact Privacy Inc. Customer 12412667671 / Scott Alex, BDO USA, D2022-1227 (WIPO June 1, 2022) (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration or Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent registered a domain name that combines Complainant's well-known mark with a term describing Complainant's worldwide presence, and does not yet appear to have made any active use of the domain name. Respondent has not come forward with any explanation for its selection of the domain name or its intended use for the name. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant and its mark, perhaps in support of a fraudulent phishing scheme, and that Respondent is maintaining the domain name for that purpose. See, e.g., Morgan Stanley v. Darshan Nenuji / Yuvii Consultancy, supra (inferring bad faith in similar circumstances); Stichting BDO v. Contact Privacy Inc. Customer 12412667671 / Scott Alex, BDO USA, supra (same). The Panel finds that the disputed domain name was registered or is being used in bad faith.

 

DECISION

Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bdo-global.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David E. Sorkin, Panelist

Dated: August 5, 2022

 

 

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