Oliver Wyman, Inc. v. Contact Privacy Inc. Customer 1241572031
Claim Number: FA1708001744547
Complainant: Oliver Wyman, Inc. of New York, New York, United States of America.
Complainant Representative:
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC of Atlanta, Georgia, United States of America.
Respondent: Contact Privacy Inc. Customer 1241572031 of Toronto, Ontario, CA.
Respondent Representative: Contact Privacy Inc. Customer 1241572031 of Toronto, Ontario, CA.
REGISTRIES and REGISTRARS
Registries: Silver Avenue, LLC
Registrars: Google 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 Examiner in this proceeding.
Eleni Lappa, as Examiner.
Complainant submitted: August 15, 2017
Commencement: August 16, 2017
Default Date: August 31, 2017
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.
Complainant is a legal entity with an international scope of activities. Complainant’s submissions indicate that it was founded in 1976, and is a U.S. legal entity acting as a global management consulting firm with 4,000 professionals in more than 50 cities across 26 countries and owns a series of at least 43 trademark registrations in 19 jurisdictions for trademarks consisting of or including its company name “OLIVER WYMAN”.
.
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, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use
2. Registrant has no legitimate right or interest to the domain name [URS/.usRS 1.2.6.2]
3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3]
With regard to URS 1.2.6.1:
With regard to URS 1.2.6.2:
Respondent has submitted no evidence of legitimate rights or interests related to the domain name under review <oliverwyman.company>. Therefore the requirement of URS 1.2.6.2 is fulfilled.
With regard to URS 1.2.6.3
In order to substantiate the element of bad faith, the Rules state the following, non-exclusive list of circumstances in an effort to assist the determination of the Examiner in relation to bad faith, that may nonetheless determine it exists on the basis of other grounds:
1.2.6.3. that the domain was registered and is being used in bad faith.
A non-exclusive list of circumstances that demonstrate bad faith registration and use by the Registrant include:
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.
By taking into account the domain name under review and its related, currently inactive, website, in conjunction with the fact that the Respondent has no apparent rights or legitimate interests to the name “OLIVER WYMAN”, there seems to be no obvious good faith reason for Respondent to register the said domain name; on the contrary given the fame of Complainant’s company name and related trademarks, it can be reasonably inferred that the Respondent did not register it by chance but instead knew of should have known of the prior rights of the Complainant and nonetheless registered the domain name <oliverwyman.company> in an effort to unfairly exploit Complainant’s goodwill. Furthermore, the said website which currently appears to be inactive, does not waive the issue of bad faith use on the part of the Respondent; to the contrary such passive holding may be deemed as an ongoing attempt to obtain commercial gain by attracting customers that would confuse it, even if inactive, with the Complainant’s rights and there are numerous decisions that confirm an underlying bad faith of domain name parking when it comes to a domain name identical to prior well-known intellectual property rights. Moreover, such inactivity does not avert the risk of disruption to the business of Complainant. In particular, as the domain name of said website <oliverwyman.company> is identical to the company name and trademarks of the Complainant, an average visitor might reasonably assume that the said website belongs to or is controlled by the Complainant and its inactivity may be conceived as inactivity of the Complainant, thus disrupting its business and its public image of consistent market presence online. Therefore the requirement of URS 1.2.6.3 is fulfilled.
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:
Eleni Lappa, Examiner
Dated: August 31, 2017
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