The Boston Consulting Group, Inc. v. Linda Mercado Greene / Ms.
Claim Number: FA1909001862621
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bcgholdingsinc.com>, registered with Google LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2019; the Forum received payment on September 17, 2019.
On September 18, 2019, Google LLC confirmed by e-mail to the Forum that the <bcgholdingsinc.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 September 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@bcgholdingsinc.com. Also, on September 23, 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 October 18, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Complainant is a world-renowned business management consulting firm with 82 offices in 46 countries and 10,500 employees. Complainant has rights in the BCG mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 983,019 registered Apr. 30, 1974). Respondent’s <bcgholdingsinc.com> domain name is confusingly similar to Complainant’s BCG mark. Respondent incorporates the BCG mark in its entirety and adds the generic terms “holdings” and “inc” in addition to the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bcgholdingsinc.com> domain name. Respondent is not permitted or licensed to use Complainant’s BCG mark nor commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in an attempt to pass off or somehow affiliated with Complainant.
Respondent registered and is using the <bcgholdingsinc.com> in bad faith as Respondent attempts to disrupt Complainant’s business by redirecting users to a competing website. Respondent also attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s website. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the BCG mark through due to Complainant’s long-standing use of the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Boston Consulting Group, Inc. (“Complainant”), of Boston, MA, USA. Complainant is the owner of domestic and global registrations for the mark BCG, which it has continuously used since at least as early as 1972, in connection with its provision of innovative management, consulting, and business solutions across a wide range of industries.
Respondent is Linda Mercado Greene / Ms. of Washington, D.C., USA. Respondent’s registrar’s address is listed as Toronto, Canada. The Panel notes that the <bcgholdingsinc.com> domain name was registered on or about July 27, 2015.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the BCG mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided a copy of its USPTO registration for the BCG mark (e.g. Reg. No. 983,019 registered Apr. 30, 1974). The Panel here finds that Complainant has adequately proven its rights in the BCG mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bcgholdingsinc.com> domain name is confusingly similar to Complainant’s BCG mark. Registration of a domain name that includes a mark in its entirety and adds generic terms and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the BCG mark in its entirety and adds the non-distinctive terms “holdings” and “inc” in addition to the “.com” gTLD. Therefore, the Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s BGC mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <bgcholdingsinc.com> domain name to pass off or suggest affiliation with Complainant. Use of a disputed domain name to pass off as a complainant in order to create confusion among Internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has provided the panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Complainant’s BCG mark and offers business consulting services in the cannabis industry. The Panel here finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the <bcgholdingsinc.com> in bad faith as Respondent attempts to disrupt Complainant’s business. Use of a disputed domain name to disrupt a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel again notes that Complainant provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Complainant’s BCG mark and offers business consulting services in the cannabis industry. The Panel here finds that evidence supports the conclusion that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant also contends Respondent’s intentional use of the <bcgholdingsinc.com> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes can indicate bad faith registration and use per Policy ¶¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Complainant’s BCG mark and offers alternative business consulting services. The Panel here finds that evidence supports a finding that Respondent registered and used the at-issue domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual and constructive knowledge of Complainant’s rights in the BCG mark due to Complainant’s long-standing use of the marks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that incorporates a well-known and long-standing mark may be evidence of actual knowledge. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant provides evidence that its BCG mark has been used prior to the registration of the disputed domain name and the Respondent attempts to trade off the goodwill of Complainant. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the BCG mark prior to the registration of the disputed domain name, which constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bcgholdingsinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 1, 2019
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