WIPO Arbitration and Mediation Ceter

ADMINISTRATIVE PANEL DECISION

The Boston Consulting Group v. The Trustee for Birrarung Trading Trust

Case No. DAU2018-0024

1. The Parties

The Complainant is The Boston Consulting Group of Boston, Massachusetts, United States of America (“United States”), represented by DLA Piper, Australia.

The Respondent is The Trustee for Birrarung Trading Trust of Sandringham, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <bcgaustralia.com.au> is registered with NetRegistry Pty. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. On August 13, 2018, the Center sent an email communication to the Complainant 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 August 14, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 15, 2018. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 12, 2018. 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 a business management consulting firm with 90 offices in over 50 countries, including offices in Sydney, Canberra, Melbourne and Perth. The Complainant has used the trademark BCG since 1967, and in Australia since September 1992, in connection with management consulting and financial advisory services. The Complainant owns trademark registrations for BCG in multiple jurisdictions including Australian trade mark registration number 586160, registered on February 16, 1994 and specifying business, financial and other services in classes 35 and 36. That trademark registration remains current. The Complainant has also registered the domain name <bcg.com> that it uses in connection with its official website where it provides information about itself and its services. The official website repeatedly uses the acronym “BCG” to refer to the Complainant and it includes a page that displays the Complainant’s Australian capabilities.

The Respondent is the trustee of a discretionary trading trust. It has registered four business names, one of which is “The Bennelong Consulting Group Australia New Zealand”, registered on August 17, 2017.

The disputed domain name was created on July 31, 2017. It resolves to a website for “Bennelong Consulting Group – BCG Australia New Zealand” offering management consulting and commercial advisory services. The website formerly displayed a logo featuring the letters “BCG” and repeatedly referred to the operator of the website as “BCG”. It offered a newsletter called “BCG Insights”. It variously claimed that “BCG” was “the Asia-Pacific’s leading top tier management consulting group” and that “BCG Australia” was a “boutique management consultancy group”. It invited Internet users to “Contact BCG Today”. After the Complainant sent the Respondent a cease-and-desist letter and follow-up emails in May 2018, parts of the website changed. The top of the website was retitled “Bennelong Strategic Advisory Partners AP” and it now prominently displays the word “Bennelong”. The logo was redesigned and it no longer includes the acronym “BCG”. The website invites Internet users to “Contact Bennelong Today”. However, other website content continues to refer to the operator of the website as “BCG” or “Bennelong Consulting Group – BCG Australia New Zealand” and it continues to offer “BCG Insights”.

5. Parties’ Contentions

A. Complainant

The disputed domain name wholly incorporates, and is confusingly similar to, the Complainant’s BCG trade mark. The addition of the geographical term “australia” does not distinguish the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. Owing to the Complainant’s longstanding and extensive use of the BCG trade mark, the Respondent has registered and used the disputed domain name with actual knowledge of the Complainant’s rights in the BCG trade mark. The Complainant has no business relationship with the Respondent. The Respondent has not been licensed or otherwise permitted by the Complainant to use the BCG trade mark in any form. Selecting a business name with high similarity to the Complainant’s, abbreviating its business name to the BCG trade mark, actively using this abbreviation on the Respondent’s website and purporting to offer identical services to those of the Complainant is not a bona fide offering of services. Subsequent use of the disputed domain name with incongruous website content and branding is not a bona fide offering.

The Respondent has registered and subsequently used the disputed domain name in bad faith. After receiving notice of the Complainant’s rights, the Respondent altered its website with different branding and content that continues to incorporate the BCG trade mark. This clearly shows that the Respondent’s intention is to disrupt and harm the Complainant’s business and to exploit confusion induced by use of the BCG trade mark and “australia” to divert Internet users away from the Complainant’s official website for commercial gain, mainly for provision of the Respondent’s services.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the auDRP provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the BCG trademark.

The disputed domain name wholly incorporates the Complainant’s BCG trademark as its initial element.

After the letters “bcg”, the disputed domain name includes the country name “Australia”. A geographical term is incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the auDRP. See, for example, Jaguar Land Rover Limited v. The Trustee for the Trivett Family Trust, WIPO Case No. DAU2016-0033.

The disputed domain name also includes the open Second-Level Domain suffix “.com.au”. This element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd, WIPO Case No. DAU2008-0023.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent is using the disputed domain name in connection with an offering of services and the key question is whether that offering of services is bona fide. The Complainant states that it has no business relationship with the Respondent and that the Respondent has not been licensed or otherwise permitted by the Complainant to use the BCG trade mark in any form. The disputed domain name wholly incorporates the Complainant’s BCG trademark as its initial element. The Respondent is likely to have been aware of the Complainant because the Complainant has been offering services identical to those offered by the Respondent in Australia, where the Respondent is located, since 1992. Customers are likely to be confused by the disputed domain name because it gives the impression that it resolves to a website operated by an Australian affiliate of the Complainant. These facts give rise to the inference that the Respondent knowingly incorporated the Complainant’s trademark in the disputed domain name to trade off the Complainant’s reputation. That is not a bona fide offering of services for the purposes of the Policy within the terms of the first circumstance of paragraph 4(c) of the auDRP. See, for example, Silpro Pty Limited v. Corey de Silva t/a Silva Spit Roast Catering, WIPO Case No. DAU2008-0013.

According to the Registrar’s WhoIs database, the Respondent is named as the trustee of the “Birrarung Trading Trust” and the registrant contact is James Leslie-Watt of the Birrarung Group. The Respondent has registered the business name “Bennelong Consulting Group Australia New Zealand” and three dissimilar business names. There is no evidence on the record of this proceeding that the Respondent has been known as “BCG” or “BCG Australia”, apart from the Respondent’s references to itself on its own website, few of which refer to “BCG Australia” in any case. Moreover, the Respondent has now changed some references on its website from “BCG” to “Bennelong”. Accordingly, there is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of the second circumstance of paragraph 4(c) of the auDRP.

The disputed domain name resolves to a website offering management consulting and commercial advisory services. This is not a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the auDRP.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.

As regards registration, the disputed domain name wholly incorporates the Complainant’s BCG trademark as its initial element, combining it with “Australia”. The Complainant has acquired considerable reputation in its BCG trademark in the business management consulting sector through its long-standing use of that mark in connection with its services, including in Australia, where the Respondent is located. The Respondent offers identical services. The addition of the word “Australia” gives the impression that the disputed domain name resolves to a website operated by an affiliate of the Complainant. There is no evidence on the record of this proceeding that the Respondent has been known as “BCG” or “BCG Australia”, apart from the Respondent’s references to itself on its own website. These facts give rise to the inference that the Respondent knowingly incorporated the Complainant’s trademark in the disputed domain name in bad faith.

As regards use, the Respondent uses the disputed domain name in connection with an offering of services identical to those of the Complainant. The Respondent’s website is operated for commercial gain. Even though the Respondent changed some of its website content after receiving a cease-and-desist letter, some Internet users may still not realize that the website is unaffiliated with the Complainant due to the numerous references that it continues to make to “BCG”. In any case, even when Internet users realize that the website is unaffiliated with the Complainant, by that time they have already reached the website and the purpose of attracting them by creating confusion with the Complainant’s mark as to the affiliation of that website has been achieved. For these reasons, the Panel finds that the facts of this case fall within the terms of the fourth circumstance in paragraph 4(b) of the auDRP.

Therefore, the Panel finds that the disputed domain name has been registered and subsequently used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.

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 <bcgaustralia.com.au> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 16, 2018