The Boston Consulting Group, Inc. v. N/A
Claim Number: FA1601001658674
Complainant: The Boston Consulting Group, Inc. of Boston, Massachusetts, United States of America.
Complainant Representative:
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: N/A of mumbai, Maharashtra, International, IN.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: INFIBEAM INCORPORATION LIMITED
Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: January 29, 2016
Commencement: February 1, 2016
Default Date: February 17, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, Boston Consulting Group, Inc. (BCG) submits that it is a world renowned business management consulting firm with 82 offices in 46 countries and 10,500 employees. The Complainant is recognized as a leading provider of innovative business solutions and its collaborative approach to complex business issues across a wide range of industries.
The Complainant submits that it owns a number of trade and service mark registrations around the world for the mark ‘BCG’. The Complainant also owns the trade dress and trade names related to BCG’s business management consulting business. Furthermore, the Complainant submits that the Complainant has, as early as 1963, prominently used the BCG Marks in connection with BCG’s business management and strategy consulting services and the same have become well known throughout the United States and internationally.
The Complainant submits that BCG Marks have been promoted among the purchasing public throughout the United States and internationally on an extensive and frequent basis through a variety of media, including through leadership articles, conference sponsorships, online media, and special events held around the world. By virtue of the wide renown of the BCG Marks, and the wide geographic availability and extensive sale of the BCG’s services, the BCG Marks have become highly distinctive in the minds of the purchasing public.
The Complainant further submits that it operates its official internet website at <bcg.com> via which the consumers can access information about BCG and its services, obtain information about BCG’s capabilities and read insights from BCG’s experts in various industries. The BCG website is a vital and integral part of the BCG’s business.
The Complainant alleges that the domain name <bcg.ooo> wholly incorporates and is identical to the Complainant’s registered BCG mark. The Complaiant specifically submits that the domain name <bcg.ooo> is identical or confusing similar to the name of Complainant’s Russian entity, BCG, o.o.o. and that the business of the complainant has no relationship whatsoever with the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use the BCG marks or to apply for any domain name incorporating the BCG Marks.
The Complainant further submits that by creating confusion through its registration and use of a domain name wholly comprised of and identical to the mark BCG, the Respondent is attempting to disrupt the business of a competitor which is evidence of bad faith registration.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to establish a prima facie case, proven by clear and convincing evidence, for each of the following three elements in order to obtain an order for suspension of the domain name.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that it is a world renowned business consulting firm and its trademark ‘BCG’ is a famous and well known trademark. The documents provided by the Complainant have established that the mark ‘BCG’ is registered by the Complainant in Class 35 by the United States Patent and Trademark Office on April 30, 1974 and the same has been used continuously since. Thus, the mark ‘BCG’ registered by the Complainant is distinctive of its business. The acronym BCG does have other usages for eg., a tuberculosis vaccine etc., However, in the context of the usage i.e., with the .ooo extension there are two factors which go completely in favour of the Complainant viz.,
(i) the .ooo extension is the acronym for a Limited liability company in the Russian language;
(ii) the complainant has an entity by the name BCG o.o.o for its Russian entity.
The Complainant has legitimate rights in the acronym BCG and use of BCG.ooo is identical to the Complainant’s mark and name.
The Respondent has registered the domain name in dispute, i.e., <bcg.ooo>, thus, wholly incorporating the trademark “BCG” of the Complainant, which is found to sufficiently establish identity/confusing similarity. In fact, the registering of a domain name with the `.ooo’ extension adds to confusion as to origin, affiliation and sponsorship between the Complainant and the Respondent which in fact dilutes the brand of the Complainant. There is thus identical and/or confusing similarity between the Complainant’s mark and the Respondent’s domain name.
2. No Rights or Legitimate Interests:
The Respondent has registered a domain name containing the Complainant’s registered trademark ‘BCG’. The Complainant has trademark registration for the mark ‘BCG’ and has been using the trademark since 1967. Conversely, the Respondent, as per who is records, registered the domain name only on 16th January, 2016. Therefore, it is established without doubt that the Complainant has been using the mark for a sufficiently long period thereby establishing an association between the mark and the Complainant.
The Complainant has shown that the Respondent is not making legitimate use of the domain name ‘<bcg.ooo>’. Moreover, the Complainant has not authorized or given any permission to the Respondent to use the BCG trademark. As the Respondent has not filed a Response, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has thus proved that the Respondent does not have any rights or legitimate interests in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <bcg.ooo> on January 16, 2016. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location.”
Pursuant to the URS Procedure, the Complainant has to establish that the Respondent registered and used the domain name in bad faith. It is seen that the Respondent is not making use of this website with bona fide offerings of goods or services in any commerce. Neither is the Respondent making any legitimate non-commercial use nor fair use of this domain name. Further the Respondent also does not claim any rights in the acronym BCG in any other manner. The website of the Respondent does not exist and is parked with the message “This page can’t be displayed.”
This leads to a clear inference that the Respondents have acquired the domain name “<bcg.ooo>” for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark at a profit. Thus, the Respondent’s registration and use of the impugned domain name by the Respondent is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<BCG.OOO>
Prathiba M. Singh, Examiner
Dated: February 17, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page