WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz Allen Hamilton Inc. v. DP Consulting, Int'l
Case No. D2013-1204
1. The Parties
The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America (the “USA”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, USA.
The Respondent is DP Consulting, Int'l of New York, New York, USA.
2. The Domain Name and Registrar
The Disputed Domain Name <boozallenco.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 8, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 July 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2013.
The Center appointed Andrew Mansfield as the sole panelist in this matter on August15, 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, Chile, France, Japan, China, United Arab Emirates, Norway and the USA, with the earliest service mark registered in the USA in 1970.
According to the information the Complainant received from Domains by Proxy, DP Consulting, Int'l ("Respondent") is the registrant of the Disputed Domain Name in this proceeding.
5. Parties’ Contentions
The Complainant asserts that it is a global strategy and technology consulting firm, with more than 23,000 employees working in offices located on six continents. Since at least 1942, the Complainant has been using the mark BOOZ ALLEN HAMILTON in connection with its consulting services, and also uses the shortened version thereof BOOZ ALLEN (collectively the "BOOZ ALLEN marks").
The Complainant’s contentions can be summarized as follows:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s BOOZ ALLEN HAMILTON and BOOZ ALLEN trademarks, in which the Complainant has rights:
(i) the Complainant has been using BOOZ ALLEN HAMILTON, and its shortened version BOOZ ALLEN, 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 registrations for the BOOZ ALLEN marks 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 marks 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 is nearly identical to the BOOZ ALLEN mark because it consists of the terms “Booz Allen” together with the addition of "co" and extension “.com”, making it virtually identical to BOOZ ALLEN mark.
(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, is not commonly known by the name BOOZ ALLEN and has not done business under that name; and
(ii) the Complainant has not authorized the Respondent to own or use any domain name incorporating the BOOZ ALLEN marks.
(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 marks since at least 1968, when the Complainant filed its application to register the first of its BOOZ ALLEN marks with the United States Patent and Trademark Office (“USPTO”);
(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 filed a Response does not inevitably result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may allow the Panel to draw 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 finds that the Complainant has rights in respect of the BOOZ ALLEN marks on the basis of its numerous registrations around the world including in the USA since 1970.
It is well-established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain name extension, in this case “.com” should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd. WIPO Case No. D2006-0762). The addition of the letters “co” to the Disputed Domain Name do not lessen the similarity or the likelihood of confusion (see CVS Pharmacy, Inc. v. WhoisGuard Protected / Andrey Molodavkin, WIPO Case No. D2009-1604. In that case, respondent's domain names were found to be confusingly similar to complainant's trademark where domain names included the complainant's trademark in its entirety.
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the BOOZ ALLEN marks 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating 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 is it associated with the Complainant in any way that could give rise to any license, permission or other right by which the Respondent could own or legitimately use the Complainant’s BOOZ ALLEN marks. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a BOOZ ALLEN trademark 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 in 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 the Registrar. 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 misleadingly 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).
Given the above-mentioned circumstances, the Panel is of the opinion that the Respondent registered the Disputed Domain Name with the Complainant’s trademark in mind to take advantage of Internet users who mistyped the Complainant’s domain name and were instead diverted to the Respondent’s website for the Respondent’s commercial gain and profit. This 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
It is well-established that the registration of a domain name that is confusingly similar to a well-known trade mark by any entity that does not have a relationship to that mark maybe 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). In this case, the Complainant is a global strategy and technology consulting firm with more than 23,000 employees working in offices located on six continents. It is fair to assume the Respondent is aware of the reputation and business activities of the Complainant. Further, “Booz Allen” is a distinctive term comprising of two individuals’ names. In this Panel’s view there is no believable reason as to how the Respondent could have developed the confusingly similar Disputed Domain Name except that it meant to be similar to the Complainant’s mark.
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 paragraph 4(b)(iv) of the Policy (Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that the Respondent deliberately registered a domain name confusingly similar to the Complainant’s trademark, with an intent to attract or divert Internet users from the Complainant’s website to the Respondent’s parking page for commercial gain. This is a strong indication of bad faith for this Panel.
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 <boozallenco.com> be transferred to the Complainant.
Date: August 29, 2013