Complainant is Booz Allen Hamilton, Inc. of McLean, Virginia, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Jack Sun of San Diego, California, United States of America.
The domain names <boozallenhamilton.info> and <booz-allen.info> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2013. On October 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2013.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 2, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Complainant is a leading global strategy and technology consulting firm, with more than 23,000 employees working in offices located on six continents. Since at least 1942, Complainant has been using the trademark BOOZ ALLEN HAMILTON in connection with its consulting services, and also uses the shortened version thereof, BOOZ ALLEN (collectively, the “BOOZ ALLEN Marks”). Complainant owns valid and subsisting federal trademark registrations in the United States and many other countries of its BOOZ ALLEN Marks. In 1968, Complainant filed its application to register BOOZ ALLEN HAMILTON with the United States Patent and Trademark Office (which matured into U.S. Reg. No. 888,837), and in 2009, Complainant filed its application to register BOOZ ALLEN (which matured into U.S. Reg. No. 3820454). Complainant’s BOOZ ALLEN Marks are well known, famous and recognized in the United States and around the world as an indicator of Complainant’s products and services.
Respondent registered the Disputed Domain Names on March 10, 2011.
On September 26, 2013, Complainant, through its counsel, wrote to Respondent demanding that it cease using, and turn over, the <boozallenhamilton.info> domain name. Respondent never replied to this letter. Subsequent to sending the letter, Complainant learned that Respondent also owned another domain name, <booz-allen.info>.
The following are Complainant’s contentions:
-The Disputed Domain Names are confusingly similar to the BOOZ ALLEN Marks.
-Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
- Respondent is not commonly known by the Disputed Domain Names and has not acquired any trademark or service mark rights to use those names.
-The Disputed Domain Names were registered and are being used in bad faith.
-Respondent has used the Disputed Domain Names to intentionally trade on Complainant’s goodwill and trademarks.
- In addition to any actual knowledge that Respondent may have had of Complainant’s rights in its trademarks, Respondent has had legal constructive notice of Complainant’s trademark rights.
Respondent did not reply to Complainant’s contentions.
In order for Complainant to prevail and have the Disputed Domain Names transferred to Complainant, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the BOOZ ALLEN Marks based on longstanding use as well as its United States and foreign trademark registrations for the BOOZ ALLEN Marks. The Disputed Domain Names consist of the BOOZ ALLEN Marks, one domain name connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.info”, the other without a hyphen. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). And, although one of the Disputed Domain Names contains a hyphen between the words “Booz” and “Allen”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY).
Finally, the addition of a gTLD such as “.info” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademarks. The name of Respondent has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that Respondent was improperly using the Disputed Domain Names to disrupt Complainant’s business and for commercial gain.
In addition, Respondent registered the Disputed Domain Names on March 10, 2011, long after the BOOZ ALLEN Marks had become world famous and distinctive.
Accordingly, the second element of paragraph 4(a) has been met by Complainant.
First, a finding of bad faith may be made where a respondent knew or should have known of the registration and use of a trademark prior to registering a domain name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case with Respondent’s registration of the Disputed Domain Names decades after Complainant began using and registering its trademarks in the United States and throughout the world. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Second, it is reasonable to infer from the circumstances of this case that Respondent registered the Disputed Domain Names to disrupt Complainant’s business and to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks. It can also be inferred that Respondent registered and used the Disputed Domain Names for the specific purpose of trading on the name and reputation of Complainant and its trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”). This behavior constitutes bad faith registration and use of the Disputed Domain Names under the Policy.
Third and quite significantly, Respondent has been involved in numerous proceedings involving the registration of domain names incorporating third party trademarks such as <morganstanleyaustralia.com>, <crownplaza.co.in>, <lazard.in>, <marimekkobags.com> and <nutriciamedical.com>. In addition, bad faith use and registration by Respondent was found by all of the UDRP panels in the following cases: Colgate-Palmolive Company v. DomainJet, Inc., Jack Sun, WIPO Case No. D2012-1274; L’Oréal and L’Oréal USA Creative v. DomainJet, Inc., Jack Sun, WIPO Case No. D2012-0012; Morgan Stanley v. DomainJet, Inc. c/o Jack Sun, NAF Claim No. 1362846; Missoni S.p.A v. 仲裁域名 /DomainJet, Inc. /Jack Sun, WIPO Case No. D2011-1058; Banco de Sabadell, S.A. v. Domain Jet Inc., Jack Sun, WIPO Case No. D2011-2282.
Such history of domain name cybersquatting has been held to support a finding of bad faith. Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (citing Respondent’s history in UDRP proceedings and registration and use of domain names incorporating the VOLVO trademark as evidence of bad faith).
In the present case, Respondent has engaged in a pattern of behavior which consists of registering domain names containing well known trademarks and using them to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. The Panel finds that this, too, is evidence of bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii).
Finally, Respondent’s bad faith can also be inferred from its lack of reply to the demand letter sent by Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <boozallenhamilton.info> and <booz-allen.info>, be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Date: December 12, 2013