WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz Allen Hamilton Inc. v. Jo Han
Case No. D2013-1206
1. The Parties
The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America (the “US”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, US.
The Respondent is Jo Han of Neimenggu, China.
2. The Domain Name and Registrar
The disputed domain name <booza11en.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 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 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 2, 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 an international strategy and consulting firm based in McLean, Virginia, US.
The Complainant is the owner of registrations in various jurisdictions for trademarks including the mark BOOZ ALLEN.
The Domain Name was registered on January 6, 2013.
At the date of the Center’s formal compliance check, July 8, 2013, the Domain Name did not resolve to any active website.
5. Parties’ Contentions
The Complainant submits evidence of trademark registrations in numerous jurisdictions throughout the world for marks including BOOZ-ALLEN & HAMILTON, BOOZ ALLEN & HAMILTON, BOOZ ALLEN HAMILTON and BOOZ ALLEN. The registrations include US trademark number 3820454 for BOOZ ALLEN registered on July 20, 2010 with a first use in commerce on May 1, 2009, in International Class 35 and 42.
The Complainant states that it is a global strategy and consulting firm with more than 23,000 employees working in offices in six continents. It states that it has used the name and mark BOOZ ALLEN HAMILTON since 1942 and also uses the shortened version of the mark, BOOZ ALLEN. The Complainant states that it has spent millions of dollars in promoting its trademarks and has sold billions of dollars of services under them. The Complainant contends that, as a result of these matters, its trademarks have the status of well-known trademarks to which significant goodwill attaches.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant submits that the Domain Name is virtually identical to its mark BOOZ ALLEN, but for the substitution of the letters “ll” with the characters “11” and the addition of “.com”. It contends that this represents a classic case of “typosquatting”, i.e. an attempt to mislead Internet users who are seeking to find the Complainant’s own website.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant contends that it has never authorized the Respondent to use its BOOZ ALLEN mark for the purpose of the Domain Name or otherwise and that the Respondent has not been commonly known by the Domain Name.
The Complainant also states that that it wrote to the Respondent on March 19, 2013 objecting to its use of the Domain Name but no reply was received from the Respondent.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant contends that the Respondent may have had actual notice of the Complainant’s trademarks prior to the registration of the Domain Name and clearly had constructive notice of those marks by virtue of the Complainant’s registrations.
The Complainant submits that the Respondent registered the Domain Name in order to attract Internet users to its website (although no evidence of any such website is provided) by creating a likelihood of confusion between the Complainant’s trademarks and the Domain Name.
The Complainant further submits that, in view of the nature and fame of the Complainant’s trademarks, there is no plausible explanation for the Respondent’s registration of the Domain Name other than to trade off the Complainant’s goodwill and that it is impossible to conceive of any legitimate use to which the Respondent could put the Domain Name (see e.g. Ticketmaster Corporation v. WhoisGuard Protected, WIPO Case No. D2008-0350).
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish all three of the above matters.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trademark rights in various jurisdictions throughout the world for marks including BOOZ ALLEN. The Panel accepts that, ignoring the space between the words and the .gTLD “.com”, the Domain Name is identical to the term “boozallen”, but with the letters “ll” replaced with the characters “11”. The resulting name is confusingly similar to the Complainant’s mark and the Panel finds that the substitution of the letters does not serve to distinguish the Domain Name from the Complainant’s mark.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has submitted that it did not authorize the Respondent to use its mark BOOZ ALLEN for the purposes of the Domain Name and that the Respondent has not commonly been known by that name. While it was open to the Respondent to reply to the Complainant’s contentions it has chosen not to do so and has not, therefore, tendered any submissions or evidence in support of any rights or legitimate interests that it may claim in the Domain Name. Nor is there any other evidence available to the Panel of any such rights or legitimate interests on the part of the Respondent, whether in accordance with the criteria set out in paragraph 4(c) of the policy or otherwise.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
While the Complainant relies on paragraph 4(b)(iv) of the Policy, it has not provided any evidence of any active website to which the Domain Name has at any time resolved. Nor is any such evidence apparent from the Center’s formal compliance check.
However, the Panel notes that the Complainant’s trademark BOOZ ALLEN is a term which has no dictionary meaning and that there is no evidence that the term has any meaning in commerce other than to refer to the Complainant. The Panel has also accepted that the Domain Name consists, in effect, of the Complainant’s trademark subject only to the substitution of the letters “ll” with the visually similar numbers “11”.
Absent any explanation from the Respondent of its choice of the Domain Name, the Panel finds that, on balance, the Respondent must be assumed to have registered the Domain Name with the intention of taking unfair advantage of the goodwill that attaches to the Complainant’s trademark. The Panel also accepts that it is difficult, if not impossible, to conceive of any legitimate use to which the Respondent could put the Domain Name.
In the light of these findings, the Panel does not consider it significant that the Domain Name cannot be shown to have resolved to any active website: it is well established in prior decisions under the UDRP that the “passive” use of a Domain Name does not prevent a finding of bad faith where the other circumstances of the case would tend to that conclusion (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <booza11en.com> be transferred to the Complainant.
Steven A. Maier
Date: August 7, 2013