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The World Intellectual Property Organization (WIPO) has denied a complaint filed by the international consulting company Deloitte against a firm called Penultimate Media Systems for a website that allegedly infringed one of the firm’s trademarks.

According to Deloitte, the crypto-focused website “dontkyc.com” owned by the US-based company violated one of the firm’s international trademarks – DKYC – that the consulting firm uses to designate a service that collects and qualifies data and documents for corporations.

The consulting firm states that even though the domain itself is not the same as the name of its service, Penultimate repeatedly uses the term DKYC throughout the website and even in some of the products it offers and that this increases the risk of confusion.

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Adam Taylor was appointed as the sole panelist to handle the dispute at the WIPO and, after considering the allegations presented by Deloitte, denied the complaint as the panel did not find enough evidence that led it to believe that the DKYC acronym was used to illicitly target Deloitte’s brand.

“More likely than not, the Respondent’s use of “DKYC” on its site was, as it claims, purely an acronym/abbreviation for its trading name “Don’t Know Your Client”, which was itself selected by reference to the nature of the Respondent’s service and not the Complainant’s [Deloitte] trade mark”, the panel stated.

DontKYC Renames its Website to ShadowFi

Despite winning the mediation, Penultimate decided to rebrand its website to ShadowFi to resolve the case. According to the company, they had no intentions to infringe any trademark and they allege that, upon browsing the database of the US Patent and Trademark Office, they found no coincidences for the name DKYC since Deloitte registered the trademark in other territories.

Deloitte still has the right to take the US-based company to court for infringement of its trademark.

DKYC ignored Deloitte’s request to cease and desist from using the DKYC brand in October 2021 and this could have been the reason why the consulting firm took the trouble of bringing up the matter at WIPO.

Meanwhile, Deloitte emphasized that the date on which the company registered the domain name “DontKYC” coincides with the date on which the consulting firm obtain an international trademark for “DKYC”. Penultimate stated that this was a mere coincidence but Deloitte thinks otherwise. That particular aspect of the case makes it seem like a cybersquatting incident.

What is Cybersquatting?

Cybersquatting is an activity that involves the purchase of a domain name that coincides with that of a well-established brand.

The goal of this activity is to get the company owning the brand to offer money in exchange for handing over the domain. Even though the company may own the trademark, it could opt to pay for it to avoid having to take the matter to the courts, which is typically costlier.

In this particular case, Deloitte possibly abstained from making an offer and, instead, took the matter to WIPO so it could discourage others from doing a similar thing whenever the company applies for a trademark.

Further evidence that points to a potential cybersquatting situation is that the DontKYC website does not identify which company is behind the crypto project while a valid postal address is not displayed on the website either.

However, the WIPO panelist emphasized that Penultimate’s website offers a working product that is being marketed by other crypto-focused websites. In addition, Taylor further weighed that Deloitte’s claim that DontKYC’s services are “highly similar to its own”, the two offerings are quite different.

On the one hand, DontKYC offers the possibility of making anonymous transactions by using payment cards and cryptocurrencies. Meanwhile, Deloitte’s DKYC service offers client identification and onboarding services for professionals and businesses.

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