Boston Consulting Group v. Michael Stock
Claim Number: FA1902001828952
Complainant is Boston Consulting Group (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Michael Stock (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostoncg.net>, registered with Name.com, Inc.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2019; the Forum received payment on February 7, 2019.
On February 12, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <bostoncg.net> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bostoncg.net. Also on February 19, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a world-renowned business management consulting firm that provides innovative business solutions and collaborative approach to complex business issues across a wide range of industries, including the financial services sector, with over 90 offices in 50 countries and 14,000 employees.
Complainant has rights in the BCG and the THE BOSTON CONSULTING GROUP trademarks through its trademark registrations around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., BCG - Reg. No. 983,019, registered Apr. 30, 1974; THE BOSTON CONSULTING GROUP - Reg. No. 1,934,896, registered Nov. 14, 1995).
Respondent’s <bostoncg.net> domain name is confusingly similar to Complainant’s trademarks as it is an amalgamation of Complainant’s BCG and THE BOSTON CONSULTING GROUP trademarks (extending the letter “b” to the term “Boston”), along with a “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bostoncg.net> domain name. Respondent is not authorized to use Complainant’s trademarks and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently resolves to an inactive website. Further, Respondent uses an email address associated with the disputed domain name to pass off as Complainant and defraud users through a phishing scheme.
Respondent registered and uses the <bostoncg.net> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by targeting its clientele through an email phishing scheme. Additionally, Respondent attempts to commercially benefit from users by stealing their personal information through the email phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 983,019 BCG (word), registered April 30, 1974 for services in class 35,
No. 3,235,760 BCG (word), registered May 1, 2007 for services in class 35,
No. 2,863,005 BCG.COM (word), registered July 13, 2004 for services in class 35,
No. 1,934,896 THE BOSTON CONSULTING GROUP (word), registered November 14, 1995 for services in class 35, and
No. 3,346,799 THE BOSTON CONSULTING GROUP (word), registered December 4, 2007 for services in class 35.
The Complainant has also referred to more than 170 national and international valid trademark registrations all over the world.
The <bostoncg.net> domain name was registered on September 20, 2018.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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 (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.”).
Complainant claims rights in the BCG and the THE BOSTON CONSULTING GROUP trademarks based upon registration of the trademarks with the USPTO (e.g., BCG - Reg. No. 983,019, registered Apr. 30, 1974; and THE BOSTON CONSULTING GROUP - Reg. No. 1,934,896, registered Nov. 14, 1995). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT trademark). Therefore, the Panel finds that Complainant has rights in the BCG and the THE BOSTON CONSULTING GROUP trademarks per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bostoncg.net> domain name is confusingly similar to the BCG and THE BOSTON CONSULTING GROUP trademarks, as the name is an amalgamation of the trademarks (extend the letter “b” to the term “Boston”) and adding a “.net” gTLD. The Panel agrees with the conclusion that changes are not sufficient to distinguish a domain name from an incorporated trademark (or, as in this case: incorporated trademarks) in a Policy ¶ 4(a)(i) analysis. See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT trademark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group, FA 1784135 (Forum June 8, 2018) (finding the domain name was confusingly similar to the complainant’s trademark where “[t]he only difference between the Domain Name and the Complainant’s trademarks is the mere addition of ‘.com’ and placement of a hyphen between the elements of the BIDVEST and 3663 marks.”). The Panel therefore determine that the <bostoncg.net> domain name is confusingly similar to the BCG and the THE BOSTON CONSULTING GROUP trademarks per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <bostoncg.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BCG or THE BOSTON CONSULTING GROUP trademarks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record in the present case identifies the registrant of the at-issue domain name as “Michael Stock,” and no information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s trademarks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <bostoncg.net> domain name.
Complainant also asserts Respondent’s inactive holding of the <bostoncg.net> domain name, and the domain name’s failure to resolve to an active webpage, indicates it does not have rights or legitimate interests in the disputed domain name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <bostoncg.net> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses an email address associated with the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. The Panel notes that use of an email to conduct a phishing scheme supports a finding that a respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Therefore, the Panel agrees with Complainant and finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s use of an email address associated with the <bostoncg.net> domain name to conduct a phishing scheme disrupts Complainant’s business. Use of an email address to pass off in furtherance of phishing supports a finding of bad faith under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel notes that the Complainant has provided screenshots of the alleged email phishing scheme that was sent to Complainant’s customers, and finds that Respondent’s use is disruptive and demonstrates bad faith per Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s impersonation of Complainant in emails designed to fraudulently solicit deposits from Complainant’s customers evinces Respondent’s bad faith. The Panel agrees with the conclusion that such use can support a finding of bad faith registration and use per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As per the evidence provided by the Complainant, Respondent is using the disputed domain name in fraudulent email communications for receiving money and gives the impression that the Respondent is a Senior Associate of Complainant’s consulting firm. The Panel therefore indeed finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostoncg.net> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 25, 2019
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