WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz Allen Hamilton Inc. v. Derrick Dale and Domains by Proxy, LLC
Case No. D2013-1288
1. The Parties
The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of United States of America.
The Respondents are Derrick Dale of Spring, Texas, United States of America and Domains by Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <boozallenhamilton.mobi> (the “Domain Name”) 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 16, 2013. On July 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided registrant’s 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 14, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant, a Delaware corporation headquartered in McLean, Virginia, United States of America, is a “global strategy and technology consulting firm” with more than 23,000 employees in offices located on six continents. Its parent holding company is a publicly traded company on the New York Stock Exchange. Since at least 1942, the Complainant has been using BOOZ ALLEN HAMILTON as the company name (based on the names of three founders) and also as a service mark for its consulting services. The Complainant operates a corporate website at “www.boozallen.com”.
According to the Complaint, the Complainant has sold “billions of dollars in services” under the BOOZ ALLEN HAMILTON mark and has invested millions of US dollars in advertising. In 2013, the Complainant was named by Fortune magazine as one of the “World’s Most Admired Companies”.
The Complainant holds registered trademarks for BOOZ ALLEN HAMILTON in the United States and many other countries, including United States Trademark Registration Numbers 0888837 (registered March 31, 1970), 1634966 (registered February 12, 1991), and 3820454 (registered July 20, 2010).
The Domain Name was registered in the name of the Respondent Domains by Proxy, LLC, the Registrar’s domain privacy service, on June 13, 2013. After being contacted by the Complainant, Domains by Proxy disclosed that the real party in interest was the Respondent Derrick Dale, an individual residing in Spring, Texas, United States, with an email address in the <yahoo.com> domain name. Domains by Proxy has expressed no interest in the Domain Name, and the Registrar’s WhoIs database now shows Mr. Dale as the registrant. Accordingly, Mr. Dale alone will be referred to as the “Respondent” henceforth in this decision.
There is no evidence in the record that the Domain Name has ever been used for an active website. There is also no information in the record concerning the Respondent other than his personal contact details as provided by the Registrar. Mr. Dale has not responded to communications from the Center.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its mark and that the Respondent has no known rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent, a United States resident, had constructive notice of the Complainant’s United States registered mark, as well as likely actual notice because of the fame of the mark. The Complainant infers that the Respondent selected the Domain Name in bad faith, in an effort to trade on the reputation associated with the Complainant’s well-established mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant indisputably holds trademark registrations for BOOZ ALLEN HAMILTON. The Domain Name is identical except for the lack of spaces between the three names (spaces cannot be included in URLs in the Domain Name System).
The Domain Name is visually and aurally similar to the distinctive mark, and the Panel concludes that they are confusingly similar for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
“(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has done so in this proceeding by observing that the Domain Name incorporates in its entirety the Complainant’s distinctive BOOZ ALLEN HAMILTON mark, which has no apparent generic value but is well established as a brand in the consulting industry. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant’s mark, and there is no evidence in the record that any of the examples of rights or legitimate interests given in the Policy, paragraph 4(c), apply in this case. The Respondent has not come forward with any claim of a right or legitimate interest in the Domain Name.
The panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy’s list of instances of bad faith in paragraph 4(b) includes the following, paraphrased in the Complaint:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
This example is not entirely apt in the current proceeding, since there is no evidence that the Respondent has actually used the Domain Name to attract Internet users to a website or other online location.
However, the list in paragraph 4(b) is explicitly non-exhaustive; other circumstances may also reveal bad faith. The Complainant argues that the Respondent was probably aware of the Complainant’s mark and also relies on the doctrine of “constructive notice” of its registered mark. This doctrine has been applied in some Unites States trademark cases, but UDRP panels generally do not ground findings of bad faith on the theory that the respondent should have been aware of a mark simply because it was registered in the same country, and the Panel declines to do so here. See WIPO Overview 2.0, paragraph 3.4. The Panel agrees, however, that the Respondent more likely than not had actual knowledge of the Complainant’s well-established mark, not only because of the fame of the mark but because it is such an unusual string of family names that appears to have no generic significance. It is hard to imagine why this string of names would have been chosen for the Domain Name except for its trademark significance, which is not good-faith conduct when the Respondent has no rights to use the mark.
The Respondent has not yet used the Domain Name, so far as is known, but there are many UDRP decisions involving domain names based on well-known marks where the domain names have not been employed for active commercial websites. Panels in those cases often find bad faith in the registration and “passive holding” of domain names that evidently have no generic but only trademark value. See WIPO Overview 2.0, paragraph 3.2, and cases cited therein, especially the much-cited decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The current case is similarly one where “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name”. The logical conclusion is that the Respondent selected the Domain Name for its trademark value, with the intention of later exploiting it through commercial use or sale.
The Panel concludes on the available record that the Respondent acted in bad faith within the meaning of the third element of the UDRP Complaint.
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, <boozallenhamilton.mobi>, be transferred to the Complainant.
W. Scott Blackmer
Date: September 5, 2013