URS DEFAULT DETERMINATION

The Boston Consulting Group, Inc. v. Identity Protect Limited
Claim Number: FA1608001687117

DOMAIN NAME

<bcg.ltd>

PARTIES

	Complainant: The Boston Consulting Group, Inc. of Boston, MA, United States of America
	Complainant Representative: DLA Piper LLP (US) James K Stewart of Washington, DC, United States of America

	Respondent: Liam Barbary of Sherwood Park, Nottingham, II, USA

REGISTRIES and REGISTRARS

	Registries: Over Corner, LLC
	Registrars: Mesh Digital Limited

EXAMINER

	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.
	Natalia Stetsenko, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: August 5, 2016
	Commencement: August 8, 2016
	Default Date: August 23, 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").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: Complainant is a world-renowned business management consulting business having presence in 46 countries and the owner of a number of trade and service mark registrations around the world for the mark „BCG”, particularly US. Regisration no. 983,019 „BCG”, registered on April 30, 1974 for the services in class 35 (corporate management consulting services), first used in commerce in October 1967. Complainant also benefits from protection of its trade name and trade dress.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that 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.

Determined: Finding for Complainant

The disputed domain name incorporates the “BCG” trademark in its entirety. Adding ".ltd" top-level domain is not relevant for the assessment of identity and/or confusing similarity between the registered trademark in question and the disputed domain name. The Examiner thus finds that the disputed domain name is identical to the Complainant’s “BCG” trademark and trade name.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Complainant has not authorized Registrant to use its “BCG” trademark or to register the domain name. Complainant has no business relationship whatsoever with Respondent. Respondent is not using the domain name for bona fide offering of goods and services. The Panel thus finds that Respondent lacks rights and legitimate interests in the disputed domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  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 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 web site 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 web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Given the nature of the TLD “.ltd” and the high degree of fame of Complainant’s mark, registration of the disputed domain name identical to the trademark and trade name of Complainant can be qualified as an attempt to attract commercial gain by creating a likelihood of confusion with Complainant's “BCG”mark. Respectively, by creating a likelihood of confusion Respondent is attempting to disrupt the business of Complainant, which is evidence of bad faith registration. Furthermore, in view of the fame of the mark and the fact that the TLD .ltd implies that the registrant is a corporate entity, the Panel comes to a conclusion that Respondent registered its domain name having Complainant’s trademark in mind in an effort to trade off the goodwill and renown of Complainant's mark. Therefore, it is found that Complainant has made a prima facie case for all three elements of the Policy.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ 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 name(s) be SUSPENDED for the duration of the registration:

bcg.ltd

Natalia Stetsenko
Examiner
Dated: August 25, 2016

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