The Boston Consulting Group, Inc. v. Beacon Consulting Group LLC
Claim Number: FA2005001897775
Complainant: The Boston Consulting Group, Inc. of Boston, Massachusetts, United States of America.
Complainant Representative: DLA Piper LLP of Washington, District of Columbia, United States of America.
Respondent: Eric Reid / Beacon Consulting Group LLC of Epsom, New Hampshire, United States of America.
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: May 27, 2020
Commencement: May 29, 2020
Default Date: June 15, 2020
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.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the 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 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is registered owner of the United States trademark registration no. 983,019 “BCG”, which was registered on April 30, 1974 for services in class 35 (hereinafter referred to as the “BCG Mark”), as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the Complainant’s BCG Mark and are identical to such mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the BCG Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant contends that the Respondent has no legitimate right or interest to the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the BCG Mark or to apply for any domain name incorporating the BCG Mark.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
The Examiner notes that the Respondent’s name Beacon Consulting Group LLC could also be abbreviated to BCG. However, with a view to the findings below, the Examiner does not need to come to a decision on whether the Respondent might have a legitimate right or interest to the disputed domain name.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that it owns exclusive rights in the BCG Mark. Furthermore, it states that the Respondent is creating confusion through its registration of the disputed domain name wholly comprised of the BCG Mark and is attempting to disrupt the business of BCG, which is evidence of bad faith registration.
Given that the BCG Mark is highly distinctive and well established the Examiner accepts that the Respondent was most likely aware of the BCG Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith.
However, the Complainant has not provided sufficient evidence that the disputed domain name is being used in bad faith as well. At present, the disputed domain name is inactive. The Complainant stated that the disputed domain name was registered to disrupt the business of the Complainant. The Complainant failed to provide any evidence in support to its allegations. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Central Florida Educational Foundation, Inc. v. Domain Administrator / NameFind LLC et al., FA 1887839 (Forum, March 25, 2020); Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Complainant has not provided evidence that the Respondent used the disputed domain name in bad faith. Furthermore, the Complainant has not established that the Respondent’s nonuse of the disputed domain name equals bad faith use under the passive holding doctrine, first set out in Telstra Corporation Limited v. Nuclear Marshmallows and confirmed ever since. Rather, the Complainant merely asserted that the disputed domain name was registered to disrupt the business of the Complainant. In sum, after carefully considering the evidence, the Examiner finds that the evidence is not clear and convincing that the domain name is being used in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.
<bcg.services>
Mr. Peter Müller, Examiner
Dated: June 18, 2020
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