Bdo-digital.mom

The timeline behind bdo-digital.mom

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.

ARBI TRATI O N AND MEDI ATI ON CENTER ADMINISTRATIVE PANEL DECISION Stichting BDO v. Wortex Dev Case No. D2025-0489 1. The Parties The Complainant is Stichting BDO, Netherlands (Kingdom of the), represented by McDermott Will & Emery LLP, United States of America (“United States”). The Respondent is Wortex Dev, Ukraine. 2. The Domain Name and Registrar The disputed domain name <bdo-digital.mom> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2025. On February 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 (REDACTED FOR PRIVACY / Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2025, 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 February 13, 2025. 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 the Respondent of the Complaint, and the proceedings commenced on February 13, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2025. page 2 The Center appointed Marina Perraki as the sole panelist in this matter on March 11, 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 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”. The Complainant’s internationally renowned network of public accounting firms dates back to 1963. The BDO Network currently has over 111,000 global employees in more than 1,800 offices across 164 countries around the world, including in the United States, Europe, Africa and the Middle East, North and South America, and Asia. The Complainant and members of the BDO Network have been consistently ranked amongst the top accounting firms in the United States and in the world, with over USD 2.8 billion in revenue in the United States and over USD 14 billion in global revenue combined. The Complainant owns over 350 trademark registrations and applications in 173 jurisdictions for various BDO marks, including the United States of America trademark registration No. 4854142, BDO (word), filed on December 9, 2014 and registered on November 17, 2015 for goods and services in international classes 9, 16, 35, 36, 41, 42, and 45. Furthermore, the Complainant owns the domain name <bdo.com>. At the respective website users can find detailed information about the accounting, taxation, consulting and other services offered by the Complainant and its global network in connection with the BDO Marks. One of the services the Complainant provides is promoted under the name “BDO Digital”. The Domain Name was registered on January 10, 2025, and at the time of filing of the Complaint led to a website (the Website) which appeared to advertise and promote a business under the name “BDO Digital, LLC,” and purportedly provided business support services for “Duns Records and non-classifiable establishments.” Per Complaint, D-U-N-S is a registered trademark owned by The Dun & Bradstreet Corporation, and a D-U-N-S record refers to a business profile maintained by third-party Dun & Bradstreet. The Domain Name currently leads to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and page 3 (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Procedural Consideration – Respondent’s location Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition. The location of the Respondent disclosed by the Registrar appears to be in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification. It is therefore appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue. The Respondent’s mailing address is reported to be in Ukraine, which is subject to a conflict that may affect delivery of the written notice by postal mail, in terms of paragraph 2(a)(i) of the Rules. The Panel notes that the record shows that the written notice could not be delivered to the address disclosed by the Registrar in its verification. The Panel notes that while the Center used the Respondent’s email address as confirmed by the Registrar in its reply to the verification request, the Center received a delivery failure stating that “The email account that you tried to reach does not exist”. However, it appears that the Notification of Complaint’s emails were sent to the email address appearing on the Website. The Panel further notes that the Complainant in the Amended Complaint submitted to the Mutual Jurisdiction of the courts in the location of the Registrar. The Panel concludes that the Respondent, allegedly located in Ukraine, has been given a fair opportunity to present its case, and so that the administrative proceeding takes place with due expedition, the Panel will proceed to a Decision accordingly. Furthermore, for the reasons discussed later in this Decision, the Panel has no serious doubt (albeit in the absence of any Response) that the Respondent registered and used the Domain Name in bad faith for the purposes of the Policy. Previous Panels addressing this procedural issue with the same factual background came to a similar conclusion. See Surecom Corporation NV v. Privacy service provided by Withheld for Privacy ehf / Alex Veremeenko, WIPO Case No. D2022-1172; Netbet Entreprises Ltd v. Privacy Service provided by Withheld for Privacy ehf / Vladimir Vladimir, Crowd inc, WIPO Case No. D2022-1420; Artemis Investment Management LLP v. Regery Ukraine, WIPO Case No. D2023-2289; Ares Management LLC v. Pavel Rubtsov, Alexey Sokolov, WIPO Case No. D2023-0997. Substantive Considerations A. Identical or Confusingly Similar 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 the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here, a hyphen and the descriptive term “digital”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WI P O Overview 3.0, section 1.8. The generic Top-Level Domain (“gTLD”) “.mom” is disregarded in the case, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122, see also WIPO Overview 3.0, section 1.11.1). page 4 The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the 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 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. While the website displays a copyright notice of an entity named “BDO Digital, LLC”, in the absence of any evidence supporting that the Respondent actually operates a genuine business under such name, the Panel considers that this copyright notice (and the other references to “BDO Digital, LLC” on the website) would not be sufficient to give rise to rights or legitimate interests for the Respondent on the Domain Name. This conclusion is further supported by the fact that one of the Complainant’s services is promoted as “BDO Digital”, which leads the Panel to consider this may likely be a case where the Respondent is attempting to create a risk of affiliation with the Complainant. The composition of the Domain Name and the Website which prominently displays the Complainant’s trademark and offers similar or related services create a risk of Internet user confusion. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. The Panel concludes that the Respondent has registered and used the Domain Name in bad faith. Because the BDO mark had been widely used and registered at the time of the Domain Name registration by the Respondent and enjoyed reputation, the Panel finds it more likely than not that the Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also takes into account the content of the Website which likely attempts to create a risk of affiliation with the Complainant. As regards bad faith use of the Domain Name, the Complainant has demonstrated that the Domain Name was used to resolve to the Website, which is prominently displaying the Complainant’s registered trademark and offering similar and related services, thereby giving the false impression that it is operated by the Complainant. The Domain Name was therefore used to intentionally create a likelihood of confusion with the page 5 Complainant’s trademark and business as to the source, sponsorship, affiliation, or endorsement of the Website. This can be used to conclude bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034 and WIPO Overview 3.0, section 3.1.4). Furthermore, therefore, the Respondent was prominently using the Complainant’s BDO trademark and BDO Digital business name to advertise services competing with, or having the potential to compete with, the Complainant’s services. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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 <bdo-digital.mom> be transferred to the Complainant. /Marina Perraki/ Marina Perraki Sole Panelist Date: March 26, 2025

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