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The Boston Consulting Group, Inc v. Rodney Thomas [2005] GENDND 420 (2 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Boston Consulting Group, Inc v. Rodney Thomas

Case No. D2005-0259

1. The Parties

The Complainant is The Boston Consulting Group, Inc, Boston, Massachusetts, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.

The Respondent is Rodney Thomas, New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bostonconsults.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2005. On March 11, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 16, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2005.

The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on April 19, 2005. 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

Complainant Boston Consulting Group, Inc. was founded in 1963, as a consulting arm to the Boston Safe Deposit and Trust Company Bank. From that time the firm has grown into a worldwide general management and information technology consulting firm with 60 offices in 36 countries. Many of Complainant’s strategic concepts are taught in leading business schools and executive education programs around the world. Complainant’s clients range from large to mid-sized companies, nonprofit organizations and government agencies.

Complainant owns United States Registration No. 1,934,896 for THE BOSTON CONSULTING GROUP (the “Mark”) and United States Trademark Registration No. 2,863,005 for BCG.COM. Since September 1, 1996, Complainant registered numerous domain names using its trade name and the Mark: <bostonconsulting.com> <bostonconsulting.net>, <bostonconsulting.biz>, <bostonconsulting.org> and <bostonconsulting.info> as well as a domain name including the acronym for its name, <bcg.com>.

Respondent registered the Domain Name on May 20, 2003, and uses it to advertise the services of a company by the name of Boston Consulting Group LLC, a “full service information technology consulting firm that provides an extensive array of IT services”. Complainant became aware of Respondent and its activities during July 2004, when Respondent contacted the Complainant to report that a subpoena intended to be delivered to Complainant was delivered to the Respondent in error.

Complainant’s authorized representative sent a letter by electronic mail on August 15, 2004, to Respondent. The Complainant did not receive an error message from that transmission and assumes that the email was received by Respondent. Complainant sent a confirmation of that letter by Certified Mail on August 16, 2004, requesting that Respondent discontinue its use of the Domain Name and transfer the Domain Name to Complainant. In preparing that letter, Complainant’s counsel realized that the address and telephone number listed in the WhoIs database registry listing is obviously incorrect. No “BCG RD” can be found listed in New York, New York, and when dialing the listed telephone number, an error message is received. For that reason, Complainant’s representative conducted a LexisNexis™ search of the New York Department of State and found an alternate address for Respondent’s company, a process address. To ensure that the letter reached the Respondent, the confirmation copy of the letter was sent to that process address. While it appears that the email transmission was successful, the hard copy confirmation letter was returned on September 2, 2004, marked as “unclaimed”. No response to the emailed letter was received. In an effort to elicit a response from Respondent, Complainant attempted to send another letter to Mr. Thomas on October 5, 2004, to the address listed on the domain name registration. This mailing was returned marked “No such street”. One more time, Complainant’s representative sent a copy of the October 5, 2004, letter to Mr. Thomas, this time solely by email, on October 26, 2004. Again, it is assumed that the Respondent received the email as no error transmission was received, but there has been no response.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to Complainant’s registered mark. Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

(i) the domain name registered by the respondent 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element contains two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.

Complainant has established rights in the Mark based on its long-standing use and the registration of the Mark with the United States Patent and Trademark Office (“PTO). That registration is entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).

Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to the Mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, the Domain Name <bostonconsults.com> incorporates the dominant portions of the Mark and Complainant’s domain names <bostonconsulting.com > <bostonconsulting.net> <bostonconsulting.biz> <bostonconsulting.org> and <bostonconsulting.info>, simply altering (different tense) the verb “consulting”. This inconsequential deviation does not distinguish the Domain Name from the Mark. See, Dollar Financial Group, Inc. v. Global Money Group, NAF Case No. FA0303000147529 (Inconsequential change to Complainant’s domain name does not prevent finding that domain name is confusingly similar.). The only other difference between the Mark and the Domain Name is the descriptive term “group”, which is missing from the Domain Name. The word “Group” is of lesser significance in determining likelihood of confusion. World Emergency Relief v. Chuck Thompson, WIPO Case No. D2000-0844 (November 20, 2000), (Held that descriptive word “relief” included in Complainant’s mark but missing from the domain name at issue, was of lesser significance in determining likelihood of confusion.). With the closeness of the marks and overlap in the information technology services offered by both Complainant and Respondent, confusion is likely with the consuming public. Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 (April 1, 2003). In fact Complainant has provided unrebutted evidence that confusion exists in some respect insofar as Complainant learned of Respondent and its activities when Respondent contacted the Complainant to report that a subpoena intended to be delivered to Complainant was delivered to the Respondent in error.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Complainant has established rights in the Mark for, among other things, consulting services relating to information technology, the same kinds of services that Respondent provides. It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark in connection with Respondent’s business or as part of the Domain Name. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or (iii) Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has provided no evidence to carry its burden. There is no evidence that Respondent has been commonly known by the Domain Name. Rather, it is undisputed that Complainant adopted and used the Mark and its domain names before Respondent registered the Domain Name. It also appears that Respondent has provided to the Registrar a fictitious address.

Furthermore, the evidence strongly suggests that by using a domain name that is confusingly similar to Complainant’s Mark and domain names to sell consulting services that overlap with those of Complainant, Respondent is not making a legitimate or fair use of the Domain Name without the intent to gain a commercial benefit and to divert customers from a competitor. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004); see also, Household International, Inc. v. Cyntom Enterprises, NAF Case No. FA0010000095784 (Holding that Respondent could not have any legitimate interest in the domain name at issue where “[t]he only inference is that he knew perfectly well that he would create confusion, or was willfully blind to this fact”).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.

Complainant has been using THE BOSTON CONSULTING GROUP in conjunction with its business for over 40 years before Respondent registered <bostonconsults.com>. Furthermore, the Mark (THE BOSTON CONSULTING GROUP) has been registered with the PTO since 1995, and all of Complainant’s domain names <bostonconsulting.com>, <bostonconsulting.net>, <bostonconsulting.biz>. <bostonconsulting.org> and <bostonconsulting.info> were registered before Respondent registered the Domain Name. Respondent clearly had constructive, and likely had actual, notice of Complainant’s Mark and domain names in conjunction with its consulting services and nonetheless selected a domain name that incorporated the prominent portion of the Mark and domain names. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002). To have proceeded with registration knowing of Complainant’s rights in the Mark and domain names demonstrates Respondent’s bad faith. See, America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001) (respondent’s knowledge of complainant’s mark before he registered the disputed domain name constitutes bad faith, especially where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name); See also, Educational Testing Service v. Park Jeong Foreign Language Inst., WIPO Case No. D2001-1064 (November 15, 2001); Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000).

The unrebutted evidence shows that Respondent is using a domain name that incorporates a well-established mark to attract for financial gain Internet users to its website which sells and promotes competing consulting services, by creating a likelihood of confusion with the Mark and Complainant’s domain names as to source, sponsorship, or association of Respondent’s website and the information or services offered or sold on there. Moreover, Respondent’s actions may prevent or hinder Internet users from accessing Complainant’s services on Complainant’s own website by confusing and/or frustrating prospective users.

Respondent provided the Registrar with a street address using “BCG” which is the well known acronym under which the Complainant does business, it is the prominent portion of one of Complainant’s registered marks BCG.COM but it appears to be a street name that does not exist. Thus, further evidence of Respondent’s bad faith is that Respondent’s contact information was incorrect at the time of registration or it has not been kept up to date, in contravention with Respondent’s obligations to provide accurate information under clause 4 of the Service Agreement between the Respondent and the Registrar. Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (April 10, 2002).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bostonconsults.com> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Dated: May 2, 2005