The Boston Consulting Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2206002001886
Complainant is The Boston Consulting Group, Inc. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bcgplatnion.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2022; the Forum received payment on June 27, 2022.
On June 27, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bcgplatnion.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2022 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@bcgplatnion.com. Also on June 29, 2022, 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 July 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BCG, BCG.COM and PLATINION marks established by its ownership of the international portfolio of service mark registrations described below and extensive use of the marks, in providing business management consulting services across the world since 1967, having since grown its business to presently having 82 offices in 46 countries and 10,500 employees.
Complainant submits that throughout years of use, the BCG, BCG.COM and PLATINION marks have become well and favorably known throughout the United States and internationally.
Complainant further submits that its BCG Platinion group operates its official web site at <www.bcgplatinion.com> adding that its website is a vital and integral part of Complainant’s business and a source identifier to Complainant’s consumers.
Complainant alleges that the disputed domain name <bcgplatnion.com> is confusingly similar to Complainant’s BCG, BCG.COM and PLATINION marks arguing that in circumstances where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name at issue will normally be considered confusingly similar to that mark for purposes of the Policy (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)) and citing the decision in PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant submits that each of Complainant’s BCG, BCG.COM and PLATINION marks is incorporated in its entirety is the disputed domain name.
Complainant adds that notwithstanding that the letter “i” has been removed from the PLATINION mark, each of its BCG, BCG.COM and PLATINION marks is recognizable in the disputed domain name and the absence of the letter “i” in the “platinion” element, does not prevent a finding of that the disputed domain name is confusingly similar to Complainant’s marks. See Scholastic Inc. v. Tonya Parker, WIPO Case No. D2001-0872 (stating that previous panels have decided that the addition of minor or non-distinctive elements does not alter the determination that the disputed domain name is confusingly similar to the mark in which the Complainant has rights, and thus the Domain Name “schoolasticnetworks.com” was found confusingly similar to Complainant’s trademark for “SCHOLASTIC”).
Furthermore, Complainant argues that the addition of the generic Top Level Domain (“gTLD”) extension <.com> is irrelevant to a Policy ¶ 4(a)(i) analysis and in no way distinguishes the disputed domain name from Complainant’s BCG, BCG.COM and PLATINION marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case D2000-0059 (stating that the inclusion of “.com” in the Respondent’s domain name does not “serve to distinguish that name from Complainant’s mark in any way”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant has no business relationship whatsoever with Respondent, Complainant has not licensed or otherwise permitted Respondent to use the BCG, BCG.COM and PLATINION or to apply for any domain name incorporating the BCG, BCG.COM and PLATINION marks.
Moreover, it is contended that because Complainant owns the exclusive rights in the BCG, BCG.COM and PLATINION marks for which it holds an international portfolio of registrations in jurisdictions including United States, Respondent cannot establish legitimate rights in the disputed domain name. See The Chase Manhattan Corporation et al v. John Whitely WIPO Case No. D2000-0346 (“An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent.”).
Complainant adds that given the worldwide fame of the BCG, BCG.COM and PLATINION marks, third parties are likely to believe that the business consulting services provided by Respondent are affiliated with Complainant. However, Complainant asserts that Respondent’s business consulting services are neither regulated nor authorized by Complainant.
Complainant further argues that previous panels established under the Policy have held that passing off behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant adds that it follows that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use, such that the Respondent does not have legitimate rights or interests in the disputed domain name.
Complainant next alleges that Respondent registered and is using the disputed domain name in bad faith, arguing that Respondent had constructive notice that the BCG, BCG.COM and PLATINION marks were registered trademarks in the United States and many other jurisdictions worldwide, at the time the disputed domain name was registered.
Complainant adds that in particular, given Complainant’s worldwide reputation and the ubiquitous presence of the BCG, BCG.COM and PLATINION marks on the Internet, Respondent was, or should have been, aware of the BCG, BCG.COM and PLATINION marks long prior to registering the disputed domain name. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (finding Respondent registered the domain name CAESARSPALACEPOKER.COM in bad faith after it knew or should have known about complainant’s trademarks).
Complainant further argues that while Respondent’s identity was initially unknown as she had availed of a privacy service when the disputed domain name was registered on June 27, 2022, Respondent was subsequently unmasked as being the registrant when this Complaint was filed.
Complainant refers to a screen capture of the website to which the disputed domain name resolved at the time of filing this Complaint and submits that the exhibit shows that Respondent’s website contains links to various websites that are unrelated to Complainant but is otherwise inactive.
Complainant alleges that therefore Respondent is using the disputed domain name to trade off the goodwill associated with the BCG, BCG.COM and PLATINION marks in the consulting space, because firstly, the disputed domain name is nearly identical to and wholly incorporates Complainant’s distinctive BCG, BCG.COM and PLATINION marks and secondly, Respondent is offering no services at the website to which the disputed domain name resolves and the disputed domain name could be used to send e-mails appearing to originate with Complainant.
The Policy establishes that, for purposes of Paragraph 4(a)(iv), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement of Respondent’s website or location, or of a product or service on Respondent’s website or location.
Complainant further argues that Respondent is using the disputed domain name to disrupt Complainant’s business, submitting that as noted above, the disputed is confusingly similar to, and wholly incorporates, Complainant’s BCG, BCG.COM and PLATINION marks, which suggests that the website hosted at the disputed domain name is affiliated with Complainant. Complainant adds that by creating confusion through its registration and use of the disputed domain name incorporating and confusingly similar to the BCG, BCG.COM and PLATINION marks, Respondent “is attempting to disrupt the business of a competitor . . . [which] is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” TM Acquisition Corp. v. Gary Lam (Forum Case No. FA0405000280499).
Complainant adds that because of the substantial goodwill that exists in the BCG, BCG.COM and PLATINION marks relating to Complainant’s business management and financial services, and Complainant’s official web site at <bcgplatinion.com> which serves as a strong source identifier, by creating confusion through its registration and use of the disputed domain name wholly incorporating the identical BCG, BCG.COM and PLATINION marks, Respondent “is attempting to disrupt the business of a competitor . . . [which] is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” TM Acquisition Corp. v. Gary Lam (Forum Case No. FA0405000280499).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a large international portfolio of service mark registrations for the BCG, BCG.COM and PLATINION marks and other marks that incorporate those marks which are used in its international business consultancy including:
· United States registered service mark PLATINION, registration number 4,687,584, registered on the Principal Register on February 17, 2015, for services in international classes 35 and 42;
· United States registered service mark BCG PLATINION & Design, registration number 5,822,851, on the Principal Register on July 30, 2019, for services in international classes 35 and 42;
· United States registered service mark BCG, registration number 3,235,760, registered on the Principal Register on May 1, 2007, for services in international class 35;
· United States registered trademark BCG, registration number 983,019, registered on the Principal Register on April 30, 1974 for services in international class 35;
· United States registered service mark BCG.COM, registration number 2,863, 005, registered on the Principal Register on July 13, 2004 for services in international class 35;
· United States registered service mark, registration number 5,398,480 registered on the Principal Register on February 13, 2018, for services in international classes 35, 41and 42;
· United States registered service mark BGG DIGITAL VENTURES, registration number 5,022,058 registered on the Principal Register on August 16, 2016 for services in international class 35.
The disputed domain name was registered on April 1, 2022, and the identity of the registrant is concealed on the published WhoIs by a privacy service. The disputed domain name resolves to a website with links to third party websites but is otherwise inactive.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
The Registrar has disclosed that Respondent is the registrant of the disputed domain name.
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”).
Identical and/or Confusingly Similar
Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the BCG, BCG.COM and PLATINION marks, established by its ownership of its portfolio of service mark registrations described above and extensive use of the marks in its business consultancy enterprise.
The disputed domain name <bcgplatnion.com> consists of each of Complainant’s marks in its entirety, in combination with the generic Top Level Domain (“gTLD”) extension <.com>.
Each of Complainant’s BCG, BCG.COM and PLATINION marks is clearly identifiable in the disputed domain name.
Notwithstanding that the letter “i” has been removed from the PLATINION mark, the mark is clearly recognizable in the disputed domain name and the absence of the letter “i” does not prevent a finding of that the disputed domain name is confusingly similar to Complainant’s marks.
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant has no business relationship whatsoever with Respondent;
· Complainant has not licensed or otherwise permitted Respondent to use the BCG, BCG.COM and PLATINION marks or to apply for any domain name incorporating the BCG, BCG.COM and PLATINION marks;
· because Complainant owns the exclusive rights in the BCG, BCG.COM and PLATINION marks for which it holds an international portfolio of registrations in jurisdictions including United States, Respondent cannot establish legitimate rights in the disputed domain name;
· given the worldwide fame of the BCG, BCG.COM and PLATINION marks, third parties are likely to believe that the business consulting services are affiliated with Complainant;
· Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use, such that the Respondent does not have legitimate rights or interests in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The uncontested evidence is that Complainant has built a substantial reputation and goodwill in its consultancy business and its BCG, BCG.COM and PLATINION marks established by its ownership of the international portfolio of service mark registrations described below and extensive use of the marks, in providing business management consulting services across the world since 1967 having grown to presently have 82 offices in 46 countries and 10,500 employees.
The BCG, BCG.COM and PLATINION marks are each distinctive and given the extent of the Complainant’s prior rights and reputation, it is implausible that the registrant chose and registered the disputed domain name in which each is clearly recognizable without knowledge of Complainant, its rights and its mark.
The disputed domain name is in itself also a combination of the Complainant’s BCG, BCG.COM and PLATINION marks which makes it all the more improbable that the registrant of the disputed domain name was unaware of Complainant, its business, marks and goodwill when the disputed domain name was chosen and registered.
Furthermore it is most improbable that the registrant of the disputed domain name did not intend to register a misspelling of Complainant’s own domain name which is used as the address of its official web site at <www.bcgplatinion.com> and on the balance of probabilities the registrant intentionally registered the disputed domain name in act of typosquatting.
This Panel finds therefore the disputed domain name was registered in bad faith with the intention of taking predatory advantage of the reputation and goodwill of Complainant by creating a confusion among Internet users.
With regard to the arguments that the disputed domain name is being used in bad faith, Complainant has alleged that the website to which the disputed domain name resolves is being used to provide competing consultancy services and that it is possible that the disputed domain name may be used to send phishing emails. Neither of these allegations however finds any support in the evidence adduced.
The only example of use of the disputed domain name that has been adduced in evidence is a screen capture of a very basic web page to which the disputed domain name resolves. The web page consists only of the disputed domain name and what appears to be three links to other Internet locations named “Safety Incident Management Software”, “Employee Engagement Survey Platform” and “Make a Mind Map”.
There is no evidence or suggestion on the record other than in the Complaint that the disputed domain name has been used to create an email account.
However, the uncontested evidence is that the disputed domain name is composed of a combination of three of Complainant’s registered service marks BCG, BCG.COM and PLATINION, albeit with the mark PLATINION misspelled as “platnion”, that Respondent has no rights or legitimate interests in the marks, that the disputed domain name resolves to a website with links to locations on the Internet that are not associated with Complainant, that Respondent is not using the disputed domain name for any bona fide business but instead is using the disputed domain name to attract Internet traffic to an website that is inactive save that it has links to other web locations.
In these circumstances this Panel finds that such use of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
In finding that the disputed domain name was registered and is being used in bad faith, this Panel is conscious that the disputed domain name contains a misspelling of the PLATINION mark, which on the balance of probabilities, given the structure and composition of the elements of the disputed domain name allows for a finding that the registrant was engaged in an act of typosquating.
This Panel finds therefore that the intentional use of the disputed domain name by Respondent in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the links to third party locations on Respondent’s web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bcgplatnion.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 25, 2022
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