Bdo-usallp.com

The timeline behind bdo-usallp.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AN D MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Stichting BDO v. lisa hinrichs, Klinks Inc Case No. D2023-2934 1. The Parties The Complainant is Stichting BDO, Netherlands (Kingdom of the), represented by McDermott Will & Emery LLP, United States of America (“United States” o r “US”). The Respondent is lisa hinrichs, Klinks Inc, United States. 2. The Domain Name and Registrar The disputed domain name <bdo-usallp.com> is registered with GMO Internet Group, Inc. d/b/a Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2023. On July 10, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed f rom the named Respondent (REDACTED FOR PRIVACY (DT) / Klinks Inc) and contact inf ormation in the Complaint. The Center sent an email communication to the Complainant on July 14, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint in English on July 19, 2023. On July 14, 2023, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On July 17, 2023, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verif ied that the Complaint together with the amended Complaint satisf ied the f ormal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” o r “UDRP”), the Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Supplemental Rules”). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent in English and Japanese of the Complaint, and the proceedings commenced on July 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s def ault on August 11, 2023. The Center appointed Masato Dogauchi as the sole panelist in this matter on August 31, 2023. The Panel f inds 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 a member of the international BDO network of independent member f irms, including BDO USA, LLP. The international network of f inancial services f irms provides accounting, taxation, consulting, advice and other professional services under the name BDO. The network has, in total, over 111,300 global employees in more than 1,800 offices in 164 countries around the world, including in Europe, Af rica and the Middle East, North and South America, and Asia. The Complainant owns registered BDO trademarks in many jurisdictions, including: - United States Registration for BDO, No 4,854,142, registered on November 17, 2015; and - United States Registration f or BDO, No 2,699,812, registered on March 25, 2003. The Complainant and the member f irms belonging to the BDO network also own many domain names corresponding to or containing the term “BDO”, including its official domain name, <bdo.com>, registered on February 28, 1995. The disputed domain name was registered on June 21, 2023, and resolves to a page displaying an Internet browser error message stating “[t]his site can’t be reached”. 5. Parties’ Contentions A. Complainant The Complainant’s contentions are divided into three parts as f ollows: First, the Complainant asserts that the disputed domain name is confusingly similar to its BDO trademark. According to the Complainant, the first part of the disputed domain name is composed of the term “bdo”, paired with the geographically descriptive term “usa” and the entity designation “llp”, and the term “bdo” is identical to the Complainant’s trademark BDO, and the terms “usa” and “llp” are signif icant to the Complainant because they refer to the Complainant’s United States-based business. Consumers would view the disputed domain name, or any email addresses using the “@bdo-usallp.com” extension, as relating to, or originating from, the Complainant’s US services of f erings. And, it should be considered that the addition of the generic To p-Level Domain (“gTLD”), “.com”, to the disputed domain name is without legal signif icance in this conf using similarity test. Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not commonly known by the disputed domain name, nor were the Respondent known as such prior to the date on which the disputed domain name was registered. The Complainant confirms that the Respondent is neither af f iliated with, nor has it been licensed or permitted to use the Complainant’s BDO marks or any domain names incorporating the term “BDO”. Moreover, the Complainant contends that the p assive holding of a disputed domain name is neither a bona fide of fering of goods or services nor a legitimate noncommercial or fair use, which shows that the Respondent has no legitimate interests in respect of the disputed domain name. page 3 Third, the Complainant asserts that the disputed domain name has been registered and is being used in bad f aith. The Complainant contends that, given the Complainant’s worldwide reputation and the ubiquitous presence of the BDO marks on the Internet, the Respondent should have been aware of the BDO trademarks prior to registering the disputed domain name. With regard to the bad faith use, the Complainant contends that the passive holding of the disputed domain name without a legitimate Internet purpose should be considered to indicate that the disputed domain name is being used in bad f aith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In the present case, the Registrar has conf irmed that the language of the Registration Agreement is Japanese. However, the Panel determines that the language of this proceeding shall be English rather than Japanese on the f ollowing grounds: - the Complainant requested to that ef f ect; - the Respondent surely has become aware of this case filed by the Complainant and did not reply to the notif ication in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant’s request f or the language of the proceeding being English by the specif ied due date; - the disputed domain name is not in Japanese but in Latin script; - the use of the Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response f rom the Respondent. 6.2. Substantive Matters In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the f ollowing decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant. In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the f ollowing: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 f aith. page 4 A. Identical or Confusingly Similar The Panel f inds that the Complainant has rights in the BDO trademark. The disputed domain name includes the Complainant’s BDO trademark in its entirety, and the first part of the disputed domain name after the term “bdo” accompanied by a hyphen is to be divided into two terms, “usa” and “llp”. Where 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 f inding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”). The last part of the disputed domain name “.com” represents one of the gTLDs, which is irrelevant in the determination of the conf using similarity between the disputed domain name and the BDO trademark. Theref ore, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The above requirement provided f or in paragraph 4(a)(i) of the Policy is accordingly satisf ied. B. Rights or Legitimate Interests The Panel f inds that there is no evidence that shows the Respondent is commonly known by the name “BDO”, “BDO USA” or “BDO USA LLP”, and that the Respondent is not af f iliated with the Complainant or authorized or licensed to use the Complainant’s BDO trademark. And it is f ound that the disputed domain name resolves to an inactive page. Since the Respondent did not reply to the Complainant’s contentions in this proceeding, the Panel finds on the available record that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0 . Further, the Panel notes that the term “usa” is a geographical one and the term “llp” is a descriptive one meaning a type of business entity. In addition, the Panel notes that the name of one of the Complainant’s group companies is BDO USA, LLP, the order of which is the same with that of the first part of the disputed domain name. Theref ore, the nature of the disputed domain name is inherently misleading and carries a risk of implied af f iliation. See section 2.5.1 of the WIPO Overview 3.0 . The above requirement provided f or in paragraph 4(a)(ii) of the Policy is accordingly satisf ied. C. Registered and Used in Bad Faith With regard to the requirement that the Respondent registered the disputed domain name in bad faith, since the Complainant’s BDO trademark is well known, it is highly unlikely that the Respondent would not have known of the Complainant’s right in the trademark at the time of registration of the disputed domain name, particularly considering the first part of the disputed domain name corresponds to the name of one of the Complainant’s group companies BDO USA, LLP. Theref ore, it is found that the Respondent registered the disputed domain name in bad f aith. On the other hand, with regard to the requirement that the Respondent is using the disputed domain name in bad f aith, the Panel f ound that the disputed domain name resolves to an inactive page. Since the Respondent did not reply to the Complaint in this proceeding, the Complainant’s BDO trademark is well known, and the implausibility of any good faith use to which the disputed domain name may be put by the Respondent, the Panel finds that the disputed domain name has been registered in bad f aith and is being used in bad f aith. See section 3.3 of the WIPO Overview 3.0 . The above requirement provided f or in paragraph 4(a)(iii) of the Policy is accordingly satisf ied. ln conclusion, all three cumulative requirements as provided f or in paragraph 4(a) of the Policy are determined to be satisf ied. page 5 7. Decision For the f oregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bdo-usallp.com> be transf erred to the Complainant. /Masato Dogauchi/ Masato Dogauchi Sole Panelist Date: September 14, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.