McKinsey Holdings, Inc. v. Mgr. Jakub Bystron
a/k/a Jakub Bystron
Claim Number: FA1006001330650
PARTIES
Complainant is McKinsey
Holdings, Inc., (“Complainant”)
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mckinsey.us>,
registered with CSL COMPUTER SERVICE (d/b/a JOKER.COM).
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 18, 2010; the Forum received a hard copy
of the Complaint on June 18, 2010.
On Jun 22, 2010, CSL COMPUTER SERVICE (d/b/a JOKER.COM) confirmed by
e-mail to the Forum that the <mckinsey.us>
domain name is registered with CSL COMPUTER SERVICE (d/b/a JOKER.COM)
and that Respondent is the current registrant of the name. CSL COMPUTER SERVICE (d/b/a JOKER.COM) has
verified that Respondent is bound by the CSL COMPUTER SERVICE (d/b/a JOKER.COM)
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On June 24, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 14, 2010 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 20, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <mckinsey.us> domain name is identical to Complainant’s MCKINSEY mark.
2.
Respondent does not have any rights or
legitimate interests in the <mckinsey.us> domain name.
3.
Respondent registered and used the <mckinsey.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, McKinsey Holdings, Inc., provides management consulting services worldwide under
its MCKINSEY and MCKINSEY & COMPANY marks.
Complainant has offered these services since 1926 and currently operates
in over fifty-two countries. Complainant
holds numerous trademark registrations in over thirty-one countries, including
with the United States Patent and Trademark Office ("USPTO"), the
USPTO
MCKINSEY Reg. No. 1,965,376 issued April 2,
1996
MCKINSEY & COMPANY Reg.
No. 1,966,624 issued April 9, 1996
IPO
MCKINSEY Reg.
No. 207044 issued January 28, 1998
OHIM
MCKINSEY Reg. No. 292755 issued September 7,
1996
CIPO
MCKINSEY
Reg.
No. TMA489190 issued
August 20, 1996
MCKINSEY&COMPANY Reg. No. TMA589452 issued June 7, 2001
HPO
MCKINSEY Reg.
No. 173821 issued June 29, 2001
SDIPO
MCKINSEY Reg.
No. 85217 issued December 10, 2007
Respondent registered the <mckinsey.us> domain name on January 27, 2010. The disputed domain name formerly resolved to a third-party’s website, Booz Allen Hamilton Inc., a direct competitor of Complainant. After resolving to one of Complainant’s competitors, the disputed domain name also formerly resolved to Complainant’s official website. Currently, the disputed domain name resolves to a commercial links website that features third-party hyperlinks that resolve to websites offering competing management consulting services. Respondent has offered to sell the disputed domain name to the general public on the resolving website for $500.00. Respondent has also offered to sell the disputed domain name directly to Complainant for $500.00.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed representations
pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to Paragraph 14(b) of the
Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant holds multiple trademark
registrations for its MCKINSEY and MCKINSEY & COMPANY marks with the USPTO,
IPO, OHIM, CIPO, HPO, and SDIPO:
USPTO
MCKINSEY Reg.
No. 1,965,376 issued April 2, 1996
MCKINSEY & COMPANY Reg. No. 1,966,624 issued April 9,
1996
IPO
MCKINSEY Reg.
No. 207044 issued January 28, 1998
OHIM
MCKINSEY Reg.
No. 292755 issued September 7, 1996
CIPO
MCKINSEY
Reg.
No. TMA489190 issued
August 20, 1996
MCKINSEY&COMPANY Reg. No. TMA589452 issued June 7, 2001
HPO
MCKINSEY Reg.
No. 173821 issued June 29, 2001
SDIPO
MCKINSEY Reg.
No. 85217 issued December 10, 2007
The Panel determines Complainant’s trademark
registrations throughout the world are sufficient to establish rights in
Complainant’s MCKINSEY and MCKINSEY & COMPANY marks under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v.
r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s
numerous registrations for its HONEYWELL mark throughout the world sufficient
to establish the complainant’s rights in the mark under the UDRP ¶ 4(a)(i)); see
also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
July 12, 2006) (finding that the complainants had established rights in marks
where the marks were registered with a trademark authority).
Complainant alleges that Respondent’s <mckinsey.us> domain name is identical to Complainant’s MCKINSEY mark. The Panel determines that Respondent has simply attached the country-code top-level domain (“ccTLD”) “.us” to Complainant’s MCKINSEY mark. The Panel finds that the addition of a ccTLD does not change the fact that the disputed domain name is identical to Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Thus, the Panel concludes that Respondent’s <mckinsey.us> domain name is identical to Complainant’s MCKINSEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has
alleged that Respondent does not have any rights or legitimate interests in the
<mckinsey.us> domain name.
The burden shifts to Respondent to prove it does have rights or
legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel
finds Complainant made a sufficient prima
facie case. Respondent’s failure to
respond to the Complaint allows the Panel to infer that Respondent does not
have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Vanguard Group,
Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding
that because the respondent failed to submit a Response, “Complainant’s submission
has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”); see also Domtar,
Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well
established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts
to respondent to show that it does have rights or legitimate interests pursuant
to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <mckinsey.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has failed to present any evidence, and the Panel fails to find any in the record, that would demonstrate that Respondent is commonly known by the <mckinsey.us> domain name. Complainant asserts that Respondent is not affiliated with Complainant and that Respondent has not been granted a license, permission, or any other right to use Complainant’s MCKINSEY mark. The WHOIS information identifies the domain name registrant as “Mgr. Jakub Bystron a/k/a Jakub Bystron,” which is not similar to the <mckinsey.us> domain name. Consequently, the Panel determines that Respondent is not commonly known by the <mckinsey.us> domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent formerly used the <mckinsey.us> domain name to resolve to a third-party website. The third-party, Booz Allen Hamilton Inc., owning the website is a direct competitor of Complainant in the management consulting industry. The Panel finds Respondent’s prior use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the <mckinsey.us> domain name pursuant to Policy ¶ 4(c)(iv). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Moreover,
Respondent’s <mckinsey.us> domain name also formerly resolved to Complainant’s
official website. The Panel finds
Respondent’s prior use of the disputed domain name to resolve to Complainant’s
official website is not a bona fide offering
of goods or services under Policy ¶ 4(c)(ii) or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iv). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002)
(holding that the respondent was attempting to build up “mistaken confidence”
in the disputed domain name by having it resolve to the complainant’s official
website and that “an unconnected party has no right or legitimate interest to
use an otherwise deceptive trademark, name or indicia to redirect Internet
traffic, even if it is directed to the legitimate owner of the trademark”); see
also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to
the Complainant’s commercial website is not a legitimate non-commercial or fair
use of the domain name” and that the respondent’s use “ cannot give rise to a
right or legitimate interest in the disputed domain name”).
Respondent’s <mckinsey.us> domain name currently resolves to a commercial website containing hyperlinks to Complainant’s competitors in the management consulting business. Complainant alleges that Respondent commercially benefits from the aforementioned hyperlinks. The Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the <mckinsey.us> domain name under Policy ¶ 4(c)(iv). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to UDRP ¶ 4(c)(iii).”).
The website resolving from Respondent’s <mckinsey.us> domain name contains an offer to sell the disputed domain name for $500.00. Additionally, Respondent offered to sell the disputed domain name for the same amount to Complainant directly. The Panel finds that Respondent’s offer to sell the disputed domain name for more than Respondent’s out-of-pocket costs provides further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(a)(ii).”).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has offered to sell the <mckinsey.us> domain name to the general public on the current website resolving from the disputed domain name. Respondent has also offered to sell the disputed domain name to Complainant. Respondent has offered to sell the disputed domain name in both instances for $500.00. The Panel finds Respondent’s attempt to sell the disputed domain name for an amount greater than Respondent’s out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to UDRP ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under UDRP ¶ 4(b)(i).”).
Respondent’s <mckinsey.us> domain name formerly resolved to one of Complainant’s direct competitors, Booz Allen Hamilton Inc. The disputed domain name currently resolves to a commercial website that contains hyperlinks to Complainant’s competitors in the management consulting industry. In both cases, Internet users interested in Complainant’s management consulting services were and are diverted to Complainant’s competitors where Internet users may choose to purchase management consulting services instead of from Complainant. Respondent implements this diversion scheme through its use of the identical <mckinsey.us> domain name. The Panel finds Respondent’s use of the disputed domain name has disrupted and currently disrupts Complainant’s management consulting business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges, and the Panel infers, that Respondent profited from its diversion scheme to Complainant’s competitor in some way. Complainant further avers, and the Panel further presumes, that Respondent currently receives click-through fees from the hyperlinks currently contained on the resolving website. Internet users may have become confused and may continue to become confused as to Complainant’s association with or sponsorship of the former and current resolving websites. The Panel concludes that Respondent’s current and former use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent also
formerly used the <mckinsey.us> domain name to resolve to Complainant’s
official website. Previous panels have concluded
that a respondent’s use of a disputed domain name to resolve to a complainant’s
official website constitutes bad faith registration under Policy ¶ 4(a)(iii). See MySpace, Inc. v. Mari Gomez, D2007-1231
(WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using
the disputed domain name to link to the Complainant’s own website. Inherent in
that conduct is the risk that the Respondent may at any time cause Internet
traffic to re-direct to a website that is not that of, or associated with, the
Complainant."); see also Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (“the Panel concludes that it is
bad faith for Respondent to register and utilize a domain name that
incorporates Complainant’s trademarks to re-direct Internet traffic, even if to
a portion of Complainant’s own website”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mckinsey.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 23, 2010
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