Oliver Wyman, Inc. v. digiinno.com
Claim Number: FA1408001573916
Complainant: Oliver Wyman, Inc. of New York, New York, United States of America.
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC of Atlanta, Georgia, United States of America.
Respondent: digiinno.com of HK, HK, International, HK.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: CONSULTING Registry
Registrars: DomainSite, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Examiner in this proceeding. Honorable Carolyn M. Johnson, sits as Examiner.
Complainant submitted: August 7, 2014
Commencement: August 13, 2014
Default Date: August 28, 2014
Having reviewed the communication records, the Examiner finds that the National Arbitration Forum 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.
No multiple complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Although Respondent 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.
IDENTICAL TO OR CONFUSINGLY SIMILAR
Complainant met the standard set out in 1.2.6.1 of the URS Procedure since the Complainant proved its right to the valid U.S. trademark registrations No. 3,614,466 and European Union’s Office for Harmonization in the Internal Market No. 964,313 No., for the mark first used in commerce in May 9, 2007, and first registered May 5, 2009, covering “financial … goods and services” as well as assertions and documents to show that the trademark is in current use.
The relevant part of the disputed domain name is <oliverwyman>; the added top-level domain being a required element of every domain name and the descriptive addition <consulting> irrelevant as well for assessing whether or not a mark is identical or confusingly similar to a protected mark, the two additions in this case do nothing to distinguish the disputed domain name from the Complainant’s trademark.
The Examiner finds that the disputed domain name is confusingly similar to Complainant’s protected <oliver wyman> mark; Complainant satisfied the elements of URS Procedure 1.2.6.1.
NO RIGHTS OR LEGITIMATE INTERESTS
Complainant met the standard set out in 1.2.6.2 of the URS Procedure since Complainant has not authorized Respondent to register a domain name containing its protected trademark and Respondent is not commonly known by the mark or the disputed domain name.
Respondent acquired no legitimate interests in Complainant’s protected mark by purchasing the domain name containing another’s mark and suggesting it is offering consulting services under that mark. One presumes this is done for commercial gain seeking to benefit from whatever goodwill attaches to Complainant’s mark. Further, Respondent has shown neither plan nor expenditures for development to support legitimate interests. Complainant also shows that Respondent is a “serial cybersquatter,” and that the disputed domain name is consigned to a “monetized parking page.” Moreover, Complainant shows that with the list of such claims associated with Respondent, that a “pattern” exists of such conduct.
Accordingly, the Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of URS Procedure 1.2.6.2.
BAD FAITH REGISTRATION AND USE
Complainant satisfied the requirements of URS Procedure 1.2.6.3.
The record shows that the disputed domain name advertises that Wyman Gordon and Bill Wyman offer “Managing Consulting” along with “Mercer Consulting Group, under the <oliverwyman.consulting> disputed domain name. This constitutes an open and obvious attempt to trade off Complainant’s name, notoriety and good will for personal gain. See Complainant, Paragraph 3.
Further, Respondent offers no explanation in the instant case, in which Respondent is in default, to excuse the blatant attempt to disrupt Complainant’s business and to confuse Internet users seeking Complainant’s services by diverting them to Respondent’s own site. Complainant further alleges that Respondent is a “serial cybersquatter,” and that the disputed domain name is consigned to a “monetized parking page.” Moreover, Complainant shows that with the list of such claims associated with Respondent, that a “pattern” exists of such conduct.
The Examiner accordingly finds that such conduct supports findings of bad faith registration and use. Respondent registered and used or passively “parked” the disputed domain name in bad faith; Complainant satisfied the elements of URS Procedure 1.2.6.3.
The Examiner finds No ABUSE or MATERIAL FALSEHOOD.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
Honorable Carolyn M. Johnson (Ret.), Examiner
Dated: September 3, 2014
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