It’s been said that “pigs get fat and hogs get slaughtered.” This idiom is used to express being satisfied with enough, that being greedy or too ambitious will be your ruin. And so it was with a domain owner who registered KPMG.NYC.
The Complainant provides audit, tax and advisory services through its member firms under the KPMG trademark and has done so for at least the past 27 years. It also owns over 480 trademark registrations worldwide which claim the KPMG trademark. While it is possible that the acronym may have other meanings, it is clearly a world famous, distinctive mark with a very high recognition factor amongst the public.
Respondent, a Ms. Sana Arif, lives in New York City (only those with an NYC address can register in this TLD) and registered the KPMG.NYC domain though she provided no rationale for doing so. She also registered other .NYC domains which incorporate other famous brands such as Deloitte.NYC, WellsFargo.NYC, Mattel.NYC, and BuzzFeed.NYC. All of these domains merely resolve to a GoDaddy parking page with no commercial links other than to the registrar itself.
One additional fact of interest here is that, when Complainant’s counsel called the Respondent to discuss this domain, she offered to sell it for $9,000 while admitting that she’d paid only USD 100 for it.
In considering the three elements of the UDRP, the Panel here found that:
- The domain is an identical copy of the KPMG trademark to which only the .NYC TLD has been added.
- In examining if the Respondent has any rights or legitimate interest in the domain, it was held that there is no evidence that Respondent has been commonly known by the domain or that she is using it in connection with a bona fide business, and she is also not making a legitimate noncommercial or fair use of the domain.
- Finally, the Panel examined the issue of whether Respondent acted in bad faith when registering and using the domain. In light of Respondent’s offer to sell the domain for $6,000, it will come as no surprise to anyone that Panel found that “Respondent no doubt registered and was certainly using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of it to Complainants or another party for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name.” The fact that Respondent registered other well-known brands in the .NYC domain just added icing to the cake, leading the Panel to find bad faith based on a “pattern of conduct for the purposes of paragraph 4(b)(ii).”
As a recovering New Yorker myself, I know how tough it can be to get by in the Big Apple. However, this case should be a warning to overly-aggressive locals who take advantage of their local address and grab up a bunch of .NYC domains. Not only has this Respondent failed to get her $6,000 price, but now she’s lost her $100 investment. No doubt there are others out there who may have heard the siren call of striking domain name gold in this manner but, in the end, they too are likely to wind up with a handful of nuttin’. There are a million sad stories in the City That Never Sleeps…
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- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017