The Boston Consulting Group, Inc. v. Karen Sylvester / Latham Inc
Claim Number: FA2005001897134
Complainant is The Boston Consulting Group, Inc. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, United States. Respondent is Karen Sylvester / Latham Inc (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostoncgp.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.
On May 20, 2020, Google LLC confirmed by e-mail to the Forum that the <bostoncgp.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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@bostoncgp.com. Also on May 26, 2020, 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 June 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, The Boston Consulting Group, is a world-renowned business management consulting firm.
Complainant has rights in the BCG and BOSTON CONSULTING GROUP marks (aka BCG marks) based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and the World Intellectual Property Organization (“WIPO”).
Respondent’s <bostoncgp.com> domain name is confusingly similar to Complainant’s BCG marks, as the domain name combines the two marks to form “bostoncg,” clearly indicating Complainant, and adds the letter “p” along with “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bostoncgp.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use the BCG marks in any manner. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make active use of the domain name.
Respondent registered and is using the <bostoncgp.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by passing off as Complainant in furtherance of an email phishing scheme. Further, the domain name resolves to an inactive webpage. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BCG marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in BCG and BOSTON CONSULTING GROUP.
Respondent is not affiliated with Complainant and is not authorized to use the BCG or BOSTON CONSULTING GROUP marks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in BCG and BOSTON CONSULTING GROUP.
Respondent’s <bostoncgp.com> domain name confuses internet users into believing the domain name is sponsored by Complainant and advances a phishing scheme involving the impersonation of Complainant’s employees in email originating from the at-issue domain name designed to fraudulently extract payments from third parties.
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”).
The at-issue domain name is confusingly similar to trademarks in which Complainant has rights.
Complainant’s registration of its BCG and BOSTON CONSULTING GROUP trademarks with the USPTO and WIPO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). 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 mark); see also Häfele Vietnam LLC v. Cong Hoan, FA 1813668 (Forum Nov. 28, 2018) (“Registration of a mark with the WIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Further, Respondent’s <bostoncgp.com> domain name uses a combination of Complainant’s BCG and BOSTON CONSULTING GROUP marks to form the at-issue domain name by starting with the first term of BOSTON CONSULTING GROUP, “BOSTON”, adding the “cg” from “BCG”, appending a “p” and following all with the generic top-level domain name “.com.” The differences between Complainant’s trademark and Respondent’s domain name do not distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Indeed, Complainant’s trademarks are clearly brought to mind upon reading the at-issue domain name. Therefore, the Panel concludes that Respondent’s <bostoncgp.com> domain name is confusingly similar to Complainant’s BCG and BOSTON CONSULTING GROUP trademarks. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of <bostoncgp.com>.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Karen Sylvester / Latham Inc” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <bostoncgp.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <bostoncgp.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <bostoncgp.com> domain name to further a phishing scheme where Respondent impersonates one of Complainant’s employees in email originating from the <bostoncgp.com> domain name. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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 at-issue domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a
Respondent’s <bostoncgp.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the domain name to confound internet users into believing the at-issue domain name is affiliated with, or sponsored by, Complainant ‑when it is not. Respondent then capitalizes on the confusion it created to pass itself off as one of a Complainant’s employees in email hosted from <bostoncgp.com>. Specifically, the email pretends to be from “Senior Associate and Counsel” at Complainant’s business in an attempt to defraud third-parties by sending them invoices for services allegedly rendered by Complainant, notwithstanding the fact that such services were not rendered and Respondent had no authority to issue such invoices. Respondent’s <bostoncgp.com> powered phishing scheme indicates Respondent’s bad faith regarding the at-issue domain name pursuant to Policy ¶ 4(a)(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).
Finally, Respondent registered <bostoncgp.com> knowing that Complainant had trademark rights in the BCG and BOSTON CONSULTING GROUP marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks, from the fact that Respondent combines two of Complainant’s trademarks in the domain name as well as from Respondent’s use of <bostoncgp.com> to impersonate Complainant in fraudulent email as discussed above. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark rights further indicates that Respondent registered and used the <bostoncgp.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostoncgp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 22, 2020
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