WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz-Allen & Hamilton Inc. v. Servability Ltd
Case No. D2001-0243
1. The Parties
The Complainant is Booz-Allen & Hamilton Inc., a Delaware corporation with its principal place of business in New York, N.Y., U.S.A. The Complainant is represented by Mr Robert W. Sacoff and Mr Bradley L. Cohn of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of Chicago, Ill., U.S.A.
The Respondent is Servability Ltd, an English corporation having its principal place of business in London, U.K. The Respondent is represented by Mr James Kent.
2. The Domain Name and Registrar
The domain name at issue is <booz.com>. The domain name was registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI") on March 8, 2000.
3. Procedural History
The original Complaint, submitted by Booz-Allen & Hamilton Inc. was received on February 15, 2001, (electronic version) and February 16, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").
On February 19, 2001, a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated February 26, 2001, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration <booz.com>.
The above Respondent is shown as the "current registrant" of the domain name at the above address.
The administrative, technical and billing contact is Reliable Network Services, the address of which is care of the Respondent.
NSI’s 5.0 Service Agreement is in effect.
The domain name registration <booz.com> is currently in "Active" status.
The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 28, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member and it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Respondent to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on March 14, 2001 (electronic) and
March 20, 2001 (hard copy).
On March 22, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On March 22, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Barring exceptional circumstances, a decision from the Panel is due on April 9, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Founded over sixty (60) years ago, Booz·Allen is a management and technology consulting firm with more than 10,000 employees with offices located in six continents. The firm markets and provides services under its registered mark "Booz·Allen & Hamilton" and the shortened forms of that mark – "Booz·Allen" and "Booz". The Complainant advertises its services on the Internet under the names "Booz·Online", "Booz·Allen", and "Booz·Allen & Hamilton".
The Complainant has been using its name and mark "Booz·Allen & Hamilton" in connection with its management consulting services since at least 1942. In the year to March 31, 2000, it spent $10 million dollars in advertising its services under its "Booz·Allen & Hamilton" name and mark. It earned more than $1.8 billion dollars in sales revenue from consulting services provided under the name and mark.
The Complainant has registered its "Booz·Allen & Hamilton" mark in numerous countries throughout the world. In the United States, the Complainant is the owner of U.S. Registration No. 1,634,966 for the service mark "Booz·Allen & Hamilton" in Class 35, pertaining to management and consulting services in various industries and fields of business, and in Class 42, pertaining to consulting services in the field of computer systems development, engineering and integration. The Complainant is also the owner of U.S. Registration No. 888,837 for the service mark "Booz·Allen & Hamilton" in Class 101, pertaining to professional counseling on organization and general management problems.
In 1998, the Complainant obtained European Community Registration No. 317743 (word mark) for the service mark "Booz·Allen & Hamilton" in International Class 35, pertaining to management and consulting services in various industries and fields of business, and in International Class 42, pertaining to consulting services in the field of computer systems development, engineering and integration. It is also the owner of European Community Registration No. 41143 (design) for the service mark "Booz·Allen & Hamilton" in International Class 35 pertaining to management and consulting services in various industries and fields of business, and in International Class 42, pertaining to consulting services in the field of computer systems development, engineering and integration.
No entity has registered "Booz" as a trademark or service mark in the United States or the European Community. "Booz·Allen & Hamilton" is well-known in the United Kingdom, where Respondent is located. The Complainant’s London office has operated under the name "Booz·Allen & Hamilton" for more than 30 years; that office currently has more than 300 employees, and in the last fiscal year, it earned more than £40,000,000 in sales revenues. Respondent is not a licensee of the Complainant nor is it otherwise authorized by the Complainant to use all or part of its name or registered service marks.
Since registration, the Respondent’s sole use of the Domain Name has been to offer it for sale on Respondent’s website, along with other names which, in the Complainant’s submission, are identical or confusingly similar to other well-known marks.
When the Complainant inquired by e-mail as to the status of the Domain Name on October 27, 2000, Respondent replied, by e-mail of October 28, 2000, that it "was not currently using this domain".
On November 16, 2000, in a telephone conversation with Mr James Kent of the Respondent, Mr Jim Peters of the Complainant offered to acquire the Domain Name for $1,000 – a sum intended to be fair compensation to Respondent for its out-of-pocket costs: the Complainant alleges that Mr Kent verbally accepted the offer. That same day, the Complainant signed and mailed to Respondent a form of agreement to transfer the Domain Name registration to the Complainant for $1,000. By e-mail dated November 28, 2000, Respondent declined to sign the agreement, stating that it "was looking for a minimum of $10,000 for <booz.com>".
5. Parties’ Contentions
(a) The domain name is confusingly similar to the Complainant’s registered marks "Booz·Allen & Hamilton" and its common law marks "Booz·Online" and "Booz·Allen".
(b) Since the Complainant uses the shortened versions of its marks in connection with its services, the public would be led to believe that a website <booz.com> would be affiliated with the Complainant (See WIPO decision D2000-0699, Sears Roebuck and Co v Hanna Law Office, where the name <searsroebuck.com> was found to be confusingly similar to the mark "Sears, Roebuck and Co").
(c) The Respondent has no rights to or legitimate interests in the name.
(d) The Respondent registered the name in bad faith in an attempt to capitalize on the goodwill associated with the Booz·Allen name and as part of a business of registering domain names for resale.
(e) Respondent’s website offered, as at December 13, 2000, some 30 domain names for sale, including <qemm.com> and <punx.com>.
(a) The word "Booz" is not a registered mark anywhere. Nor is it confusingly similar to "Booz·Allen", "Booz·Allen & Hamilton" or "Booz·Online".
(b) The Complainant’s use of the word "booz" does not constitute a famous name or mark. The word is found as a person’s name in the Bible. It is a common surname in the U.S.A. A sample search of "Yahoo! People" found the maximum allowable number of matches for the enquiry "Booz".
(c) The letters "Booz", when pronounced, sound the same as a word term generally associated with alcoholic beverages: i.e. "booze".
(d) Respondent is not a cyber-squatter. Its primary business is to provide computer consultancy services to small businesses. A small part of Respondent’s business is to speculate in generic domain names: "booz" was chosen as a name for a potential internet wine merchant – a concept which Respondent plans to explore after finding suppliers and partners. It plans a demonstration site by mid-2001. Meanwhile, the site is "warehoused". The name is not indexed on major search engines and traffic to the Respondent’s website is minimal.
(e) Respondent did not register the name for selling it to the Complainant or to any competitor of Complainant. Respondent was not aware of the Complainant prior to registration. It chose the name "because of its generic status and short length in order that a future enterprise could be associated with a memorable name".
(f) Respondent did not contact Complainant before the Complainant’s agent spoke to its representative. The Respondent simply refused to proceed with the sale transaction with the Complainant after Respondent had received a formalized offer. The Respondent’s agent made it clear to the Complainant’s agent that Respondent did not want to sell the name but that, in order to stop what it saw as constant harassment, it agreed to consider a written offer. The written specifics of that offer were unacceptable.
(g) Complainant’s main website is <bah.com>.
(h) Respondent’s policy is to surrender on request any domain that clearly infringes a trademark. It would do so in the case of "quemm.com". It did not register <punx.com>.
(i) A trademark search in the U.K. shows other marks incorporating the word "booze" such as "Booze Barn" and "Booze Brothers". A company search likewise produced numerous names incorporating "Booze", although none using "Booz" except the Complainant.
(j) The Complainant could register "booz.com" with a large number of different country suffixes.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the view of the Panel, the domain name <booz.com> is not confusingly similar to the Complainant’s registered marks "Booz·Allen & Hamilton". "Booz" was the surname of the founding father of the Complainant, although the name has not reached the worldwide iconic status of trademarked surnames such as "McDonalds". The addition of the names "Allen & Hamilton" make the mark sufficiently distinguishable from the name. Likewise, "Booz·Allen", regarded as a common law mark, is not confusingly similar to the domain name <booz.com>.
The Complainant advertises its services on the web under several names including "Booz·Online", which the Panel is prepared to accept as a common law mark. The Panel is prepared to hold that the name "Booz.com" is confusingly similar to the common law mark "Booz·Online". An Internet user with an interest in the management consulting area might easily not type the full "Booz·Allen Hamilton" expression. If the user typed in "booz", thinking that that would produce on an online presentation by the Complainant, he/she would not achieve "Booz·Online", but would reach the Respondent’s inert website. The expression "Booz·Online" indicates a site that portrays "Booz" on the Internet. So does the name <booz.com>. Hence, there is confusing similarity.
The Panel is not required to decide whether a trademark is one that could not achieve registration on the ground that it is a generic name or a surname. This mark has been registered in both the U.S. and the U.K. The Panel does not find the case cited by Complainant helpful, i.e. Sears Roebuck and Co v Hanna Law Office (WIPO D2000-0689). There the name <searsroebuck.com> was, unsurprisingly, held confusingly similar to the mark "Sears, Roebuck and Co". If the domain name here had been "Booz·Allen Hamilton.com", then the Sears Roebuck case would assist.
The "Booz·Online" website exhibited to the Complaint, reached through <boozallen.com>, refers to the Complainant and its relationship with the Special Olympics. The Complainant’s organization and its history can also be accessed through <bah.com>. The fact that Complainant uses another website is immaterial.
The Complainant gave the Respondent no rights or legitimate interests in the disputed domain name. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(a)(ii) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:
(i) before any notice to you of the dispute, your 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 and services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.
The Panel finds this second criterion proved. The Respondent, on its own admission, speculates in domain names. There is no evidence, apart from a self-serving assertion of Respondent’s making any demonstrable preparations to use the name "booz.com" as the website for an internet wine merchant. In fact, it has not used the name at all since obtaining registration.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 the complainant who is the owner of the trademark or service mark or to a competitor of that 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 web site 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 web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent registered and used the domain name in "bad faith" for the following reasons:
(a) Respondent’s was prepared to contemplate a sale of the name to the Complainant for more than the cost of registration. There was an alleged agreement to sell for US$1,000. The Respondent rejected a formal written offer at this price and wanted the price increased to US$10,000. Against the background of its acknowledged business as a dealer in domain names, this conduct gives rise to the inference that Respondent registered the name primarily for the purposes of selling it for valuable consideration.
(b) The Respondent’s claim that it had no knowledge of the Complainant before registration of the name is hard to accept. The Respondent is a large organization, well-known in its field worldwide, with a significant and long-standing operation in London. This case is unlike other WIPO cases where some credence has been given to a respondent’s ignorance of a trademark registered in another country, where the domain name registrant is in another - usually distant – country. This is especially so where the trademark owner’s business did not extend to the country where the registrant lived. See for example WIPO D200-0527 VZ Vermägens Zentrum AG v Anything.com. The Respondent’s alleged research about public perception of "booz" is unsubstantiated.
(c) The failure by the Respondent to develop the website. Such a failure has been held in many WIPO decisions as being indicative of bad faith use.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <booz.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: April 5, 2001