WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Boston Consulting Group, Inc v. Freedman Alexander
Case No. D2012-1061
1. The Parties
The Complainant is The Boston Consulting Group, Inc of Boston, Massachusetts, United States of America, represented by Wiley Rein LLP, United States of America.
The Respondent is Freedman Alexander of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <bcgcorp.org> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2012. On May 21, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On the same date, UK2 Group Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In such communication, UK2 Group Ltd. informed the Center that the disputed domain name was currently suspended for fraud. On May 25, 2012, the Center requested UK2 Group Ltd. to confirm the meaning and scope of “suspension for fraud”. On the same date, UK2 Group Ltd. informed the Center that they had updated the disputed domain name to have the registrar lock applied and removed the suspension to avoid the status.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2012.
The Center appointed Jane Lambert as the sole panelist in this matter on July 10, 2012. 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 well known management consultant and claims to be the world's leading advisor on business strategy, a leader on issues at the vanguard of management thinking and practice, such as global advantage, adaptive strategy, talent and leadership, and the digital economy. It employs more than 5,600 consultants in over 70 offices in 42 countries around the world.
The Complainant has registered the initials either “BCG” simpliciter or in combination with the suffix “.com” as trade marks in a number of countries. One of the countries in which the initials “BCG” have been registered is the United Kingdom of Great Britain and Northern Ireland. The mark is registered there for business consultancy services and management consultancy in class 35 and financial consultancy services in class 36 under registration No.1578351 with effect from January 12, 1996.
Very little is known of the Respondent other than his name and contact details.
The disputed domain name was registered on March 18, 2012, through UK2 Group Ltd. A copy of UK2 Group Ltd.’s registration agreement was attached to the Complaint. Paragraph 2.10 of that agreement incorporates the Policy by reference.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the following grounds:
(1) The disputed domain name is confusingly similar to the Complainant’s trade mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name.
(3) The disputed domain name was registered and is used in bad faith.
As to the first ground, the Complainant refers to its trade mark registrations around the world. It also claims that by virtue of its sales and marketing, the public and trade in the United States and elsewhere associate the initials “BCG” in relation to business, management and financial consultancy with the Complainant and none other. The disputed domain name differs from the registered trade mark only by the addition of the letters “corp” which are a common abbreviation for corporation and the suffix “.org”. It submits that that those differences are insufficient to distinguish the disputed domain name from the Complainant’s trade mark registrations.
As to the second ground, the Complainant submits that it is for a respondent to show that he or she has rights or legitimate interests in a domain name. It refers to the circumstances in paragraph 4(c) in which a respondent can claim a right or legitimate interest in a domain name but says that none applies in this case. Far from using the disputed domain name in respect of a bona fide offering of goods and services, the Respondent has used it as the URL for a website that looks almost exactly like the Complainant’s. The Complainant alleges that the Respondent has used that site as part of an elaborate exercise to trick members of the public into disclosing their personal data including their banking details.
As to the third ground, the Complainant refers to paragraph 4(b)(iv) of the Policy and complains that the Respondent has taken advantage of Complainant’s BCG mark to attract traffic to the bogus site in furtherance of its phishing scheme. Other evidence of bad faith is disregarding the Complainant’s cease and desist letter and using a proxy service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
The Complainant must prove that each of those three elements is present.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant has registered the letters “BCG” as trade marks in a number of countries around the world. The combination of the letters “BCG” with the abbreviation “corp” is likely to lead members of the public to believe that the disputed domain name is the URL for a website with information about the Complainant, such as job vacancies. The disputed domain name is this confusingly similar to several trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel is also satisfied that the second element is present.
Paragraph 4(c) of the Policy provides that any of the following circumstances shall demonstrate that a Respondent has rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii):
(i) Before any notice to the Respondent of the dispute, he or she has made use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if he or she has acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence that any of those circumstances applies. Nor is there any other evidence that the Respondent enjoys a right or has a legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the third element is present.
Paragraph 4(b) lists a number of circumstances which shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is provided by paragraph 4(b)(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.”
The Panel has already found that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights and that the combination of the initials “BCG” with the abbreviation “corp” is likely to trick members of the public into believing that the domain name is the URL for a site that contains information about the Complainant. Once they are on the site, some of those visitors will be tricked into disclosing their banking details and other personal data all of which have value. Thus, all the requirements of paragraph 4(b)(iv) are fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <bcgcorp.org> be transferred to the Complainant.
Dated: July 12, 2012