The Boston Consulting Group v. Contact Privacy Inc. Customer 1248301793
Claim Number: FA2009001915230
Complainant: The Boston Consulting Group of Boston, Massachusetts, United States of America.
Complainant Representative:
Complainant Representative: DLA Piper LLP of Washington, District of Columbia, United States of America.
Respondent: Contact Privacy Inc. Customer 1248301793 of Toronto, Ontario, CA.
Respondent Representative: Unknown
REGISTRIES and REGISTRARS
Registries: One.com A/S
Registrars: Google LLC
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: September 29, 2020
Commencement: October 1, 2020
Default Date: October 16, 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.
Findings of fact:
The case at hand refers to the domain name <bcg.one>.
In accordance with the provisions of URS, Complainant claims:
(i) that the domain name <bcg.one> is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith since Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor.
Complainant assertions are, mainly:
The Boston Consulting Group, Inc. is a worldrenowned business management consulting firm with 82 offices in 46 countries and 10,500 employees. BCG is recognized as a leading provider of innovative business solutions and its collaborative approach to complex business issues across a wide range of industries.
BCG owns a number of trade and service mark registrations around the world for the mark BCG. Moreover, BCG owns the trade dress and trade names related to its business management consulting business.
BCG operates its official internet website at <bcg.com>. Consumers can access information about BCG and its services, obtain information about BCG’s capabilities, and read insights from BCG’s experts in various industries via the BCG Website. The BCG Website is a vital and integral part of BCG’s business.
The domain name <bcg.one> wholly incorporates and is identical to BCG’s BCG Marks and mimics BCG’s domain name. BCG has no business relationship with Respondent, and BCG has not licensed or otherwise permitted Respondent to use the BCG Marks or to apply for any domain name incorporating the BCG Marks. Moreover, because BCG owns exclusive rights in the BCG Marks, and has numerous United States federal and international registrations therefor, Respondent cannot establish legitimate rights in the Domain Name. By creating confusion through its registration of a domain name wholly comprised of the BCG Marks, Respondent is attempting to disrupt the business of BCG, which is evidence of bad faith registration.
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:
FIRST: [URS 1.2.6.1] The registered domain name(s) is/are 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.
Determined: Finding for Complainant
The process contains documentation demonstrating that the Complainant is the owner of the trademark BCG registered before the United States Patent and Trademark Office under Registration No. 983019 used in commerce since October, 1967.
The process also contains evidence demonstrating that Complainant’s trademark BCG is in use to identify the website <bcg.com> wherein corporate management consulting services and industry advise services are provided.
Consequently, the Examiner considers that the requirement of demonstrating trademark rights, and the usage thereof, has been satisfied.
SECOND: [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with the Complainant in that the disputed domain name <bcg.one> identically reproduces the registered trademark BCG. The Examiner considers that the extension “one” does not add distinctiveness to the disputed domain, since the .one extension was created as a generic top-level domain to be used to stand out names and trademarks as “number one” in the respective field of business.
It should be noted that as asserted on the Complaint, the BCG Marks have been and are continuously promoted among the purchasing public throughout the United States and internationally on an extensive and frequent basis through a variety of media, including though leadership articles, conference sponsorships, online media, and special events held around the world.
Likewise, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
THIRD: [URS 1.2.6.3] The domain name was registered and is being used in bad faith:
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 online 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.
Determined: Finding for Complainant
In the present case, the disputed domain name consists of the word “BCG”, which happens to exactly reproduce the registered trademark “BCG” owned by the Complainant. The Examiner has steadily determined that a domain name consisting of a word identical to a previously registered trademark belonging to a third party is not the product of casualty, and less in cases where the registered trademark is a made-up or coined word, as in the present case. The registration of this type of domain does suggest beyond any reasonable doubt that the Registrant intentionally attempts to attract internet users for commercial gain by creating a likelihood of confusion with the previously registered mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s web site or location, or of a product or service on that web site or location, and therefore was registered and is being used in bad faith.
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.
<bcg.one>
Luz Helena Villamil Jimenez, Examiner
Dated: October 21, 2020
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