WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz Allen Hamilton Inc. v. PrivacyProtect.org / ICS INC.
Case No. D2013-0740
1. The Parties
The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America (“USA”).
The Respondent is PrivacyProtect.org of Queensland, Australia / ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <boozallenhamiliton.com> (the “Disputed Domain Name” and/or “Website”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2013 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 May 1, 2013.
The Center verified that the Complaint together with the amended 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 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 6, 2013. 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 Delaware, USA Corporation with its principal place of business in Virginia, USA. According to the Complainant, the company has been providing strategy and technology consulting services under the BOOZ ALLEN HAMILTON company name and service mark since 1942. It has trade and service mark registrations all over the world including Australia, Republic of Chile, France, Japan, People’s Republic of China, United Arab Emirates, Norway, Spain and the USA, with the earliest service mark registered in the USA in 1970.
According to a WhoIs record from “www.publicdomainregistry.com” dated April 12, 2013, the Respondent was listed as PrivacyProtect.org. On April 26, 2013, the Registrar revealed that ICS Inc. from the Cayman Islands is the true registrant of the Disputed Domain Name. The Respondent registered the Disputed Domain Name on September 23, 2012.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s BOOZ ALLEN HAMILTON trade mark, in which the Complainant has rights:
(i) the Complainant has been using BOOZ ALLEN HAMILTON as the name of its company and as a service mark for its consulting services since 1942;
(ii) the Complainant owns valid and subsisting trade mark and service mark registrations for BOOZ ALLEN HAMILTON in many countries including the USA since 1970;
(iii) as a result of its extensive marketing efforts and substantial sales, the Complainant’s BOOZ ALLEN HAMILTON name and mark has become well-known and recognized in the USA and around the world as an indication of its consulting products and services; and
(iv) the Disputed Domain Name, containing an additional “i” in “HAMILITON”, is a deliberate misspelling of HAMILTON. This is a classic example of typo-squatting to lure Internet users to the Respondent’s Website and is confusing similar to the BOOZ ALLEN HAMILTON mark within the meaning of paragraph 4(a)(i) of the Policy.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Respondent does not own any trade marks for BOOZ ALLEN HAMILTON, is not commonly known by the name BOOZ ALLEN HAMILTON and has not done business under that name; and
(ii) the Complainant has not authorised the Respondent to own or use any domain name incorporating the BOOZ ALLEN HAMILTON trade or service mark.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent has had legal constructive notice of the BOOZ ALLEN HAMILTON mark since at least 1968, when the Complainant filed its application to register the BOOZ ALLEN HAMILTON mark with the United States Patent and Trademark Office; and
(ii) the Respondent registered the Disputed Domain Name to intentionally attract Internet users to the Respondent’s Website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the BOOZ ALLEN HAMILTON service mark on the basis of its various registrations around the world including in the USA since 1970.
It is a well-established rule that a domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971). The Panel is of the view that the additional “i” in HAMILITON, does not add any distinctiveness to the Disputed Domain Name.
Furthermore, in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the BOOZ ALLEN HAMILTON trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s BOOZ ALLEN HAMILTON mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a BOOZ ALLEN HAMILTON trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Panel notes that the Respondent has “parked” the Disputed Domain Name with advertisements automatically generated by a parking company. While parking pages may be permissible in some circumstances, under paragraph 2.6 of WIPO Overview 2.0, a parking page would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” from a "legitimate noncommercial or fair use” of the domain name. This is especially the case where a disputed domain name was registered with a trade mark owner’s name in mind in the hope and expectation that confused Internet users searching for information about the business activities of the trade mark owner will be directed to the Respondent’s parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA, WIPO Case No. D2007-1143).
The Panel further notes that at the bottom of the Website, there is a hyperlink that says “inquire about this domain”, which links to an advertisement by BuyDomains announcing that “boozallenhamiliton.com may be for sale”. Additionally, upon reviewing the WhoIs records of the Disputed Domain Name at “www.domaintools.com”, the Panel found an advertisement announcing that “boozallenhamiliton.com is for sale”.
Given the above-mentioned circumstances, the Panel is of the opinion that the Respondent registered the Disputed Domain Name with the Complainant’s trade mark in mind to take advantage of Internet users who mistyped the Complainant’s domain name and are instead diverted to the Respondent’s Website for the Respondent’s commercial gain and profit. Such use is not considered a “bona fide offering of goods or services” under the Policy.
For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The fact that the Respondent has registered the Disputed Domain Name without having any rights or legitimate interests in it is of itself evidence of bad faith on the part of the Respondent.
It is also a well-established principle that registration of a domain name that is confusingly similar to a famous trade mark by any entity that does not have a relationship to that mark is itself sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Given that the Complainant is a global strategy and technology consulting firm with more than 23,000 employees working in offices located on six continents, the Respondent is more likely than not to be well aware of the reputation and business activities of the Complainant. Further, Booz Allen Hamilton is a distinctive term comprising of three individuals’ names. There is no plausible explanation as to how the Respondent could have come up with the confusingly similar Disputed Domain Name but to suggest an association with the Complainant’s mark and business.
In addition, using a domain name to intentionally attract, for commercial gain, Internet users to a website in an effort to trade on the Complainant’s goodwill is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that this is a clear case of typo-squatting and that the Respondent deliberately registered a domain name with a slight misspelling with intent to attract or divert Internet users from the Complainant’s website to the Respondent’s parking page for commercial gain. This constitutes irrefutable evidence of bad faith.
Lastly, the advertisement on the Website and on WhoIs database “www.domaintools.com” announcing that the Disputed Domain Name is for sale, is a strong indication that the Respondent had registered the Disputed Doman Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for profit.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <boozallenhamiliton.com>, be transferred to the Complainant.
Date: June 20, 2013