Booz Allen Hamilton, Inc. v. GoDaddy.com
Claim Number: FA0603000664931
Complainant is Booz Allen Hamilton, Inc., New York, NY (“Complainant”) represented by Robert W. Sacoff, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is GoDaddy.com (“Respondent”), 11455 Hayden Road, Scottsdale, AZ, 85260.
The domain name at issue is <boozallen.us>, registered with Go Daddy Software, Inc.
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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <boozallen.us> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 April 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2006 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <boozallen.us> domain name is confusingly similar to Complainant’s BOOZ ALLEN HAMILTON mark.
2. Respondent does not have any rights or legitimate interests in the <boozallen.us> domain name.
3. Respondent registered and used the <boozallen.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Booz Allen Hamilton, Inc., provides a wide range of business strategy and technology consulting services. Complainant registered the BOOZ ALLEN HAMILTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 888,837 issued March 31, 1970), and has used the BOOZ ALLEN HAMILTON mark continuously in connection with its business since 1942. Additionally, Complainant registered the <boozallen.com> domain name and operates a website at that domain name in connection with its business.
Respondent registered the <boozallen.us> domain name on May 2, 2002. Internet users who access that domain name are directed to a generic search-engine website offering links to websites that offer consulting services in competition with Complainant.
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 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.
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.
Complainant has established rights in the BOOZ ALLEN
HAMILTON mark through its registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <boozallen.us> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because it incorporates Complainant’s BOOZ ALLEN HAMILTON mark, omits the term “HAMILTON” and the spaces between the terms, and adds the top-level domain “.us.” Neither the removal of spaces from Complainant’s mark, nor the addition of a top-level domain, negates the fact that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also 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). Additionally, the removal of one of the terms in Complainant’s mark does not adequately distinguish the disputed domain name from the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <boozallen.us> domain name. Complainant bears the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Pursuant to Policy ¶ 4(a)(ii), once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
There is no evidence to show that Respondent is the owner or beneficiary of a trade or service mark identical to the <boozallen.us> domain name pursuant to Policy ¶ 4(c)(i). Respondent is using the <boozallen.us> domain name, which is confusingly similar to Complainant’s BOOZ ALLEN HAMILTON mark, to divert Internet users to websites that feature links to Complainant’s competitors. Such use of the disputed domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Am. Online, Inc. v. Tencent Communicatins Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
Complainant asserts that Respondent is not commonly known by
the <boozallen.us> domain name, and Respondent has not answered
the Complaint with any information indicating that it is commonly known by this
name. Complainant also asserts that
Respondent is not authorized to use Complainant’s marks. Furthermore, there is no information in the
WHOIS database implying that Respondent is commonly known by the <boozallen.us>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the <boozallen.us>
domain name pursuant to Policy ¶ 4(c)(iii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <boozallen.us> domain name, which is confusingly similar to Complainant’s BOOZ ALLEN HAMILTON mark, to operate a website containing links to Complainant’s direct competitors. The Panel presumes that Respondent receives click-through fees for misleading consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Respondent’s domain name incorporates a significant portion of Complainant’s mark and is also confusingly similar to Complainant’s <boozallen.com> domain name. Respondent’s website contains several links to websites offering services in competition with Complainant. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of UDRP ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boozallen.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 11, 2006
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