The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America (“USA”).
The Respondent is Claudio Russo, NA of Purmerend, Netherlands.
The disputed domain name <boozallen.info> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 6, 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 the Rules, paragraph 7.
The Complainant is a Delaware, USA Corporation with its principal place of business in Virginia, USA. According to the Complainant, the company has been providing strategy and technology consulting services under the BOOZ ALLEN HAMILTON company name and service mark since 1942. It has trade and service mark registrations all over the world including Australia, Chile, France, Japan, China, United Arab Emirates, Norway, Spain and the USA, with the earliest service mark registered in the USA in 1970.
According to a WhoIs record from “www.dynadot.com” dated April 18, 2013, the Respondent is listed as Claudio Russo from Netherlands. In correspondences between the Complainant and the Respondent prior to the filing of this complaint, the Respondent has identified himself as “Zhao”. The Respondent registered the Disputed Domain Name on November 29, 2012.
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s BOOZ ALLEN HAMILTON and BOOZ ALLEN trade marks, in which the Complainant has rights:
(i) the Complainant has been using BOOZ ALLEN HAMILTON, and its shortened version BOOZ ALLEN, as the name of its company and as a service mark for its consulting services since 1942 (collectively the “BOOZ ALLEN marks”);
(ii) the Complainant owns valid and subsisting trade mark registrations for the BOOZ ALLEN marks in many countries including the USA since 1970;
(iii) as a result of its extensive marketing efforts and substantial sales, the Complainant’s BOOZ ALLEN marks has become well-known and recognized in the USA and around the world as an indication of its consulting products and services; and
(iv) the Disputed Domain Name is nearly identical to the BOOZ ALLEN mark because it consists of BOOZ ALLEN together with the extension “.info”, making it virtually identical to BOOZ ALLEN.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Respondent does not own any trade marks for BOOZ ALLEN, is not commonly known by the name BOOZ ALLEN and has not done business under that name; and
(ii) the Complainant has not authorised the Respondent to own or use any domain name incorporating the BOOZ ALLEN marks.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent has had legal constructive notice of the BOOZ ALLEN marks since at least 1968, when the Complainant filed its application to register the first of its BOOZ ALLEN marks with the United States Patent and Trademark Office;
(ii) the Respondent registered the Disputed Domain Name to intentionally attract Internet users to the Respondent’s Website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website for commercial gain; and
(iii) the Respondent has demanded that the Complainant pay USD 1,590 for the Disputed Domain Name, which is far more than the Respondent’s actual out-of-pocket costs of registering the Disputed Domain Name. This constitutes registration and use of the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the BOOZ ALLEN marks on the basis of its various registrations around the world including in the USA since 1970.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain name extension, in this case “.info” should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the BOOZ ALLEN marks in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is he associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s BOOZ ALLEN marks. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a BOOZ ALLEN trade mark anywhere in the world or any evidence that he has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove he has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Panel notes that the Respondent has “parked” the Disputed Domain Name with advertisements automatically generated by a parking company. While parking pages may be permissible in some circumstances, under paragraph 2.6 of WIPO Overview 2.0, a parking page would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” from a “legitimate noncommercial or fair use” of the domain name. This is especially the case where a disputed domain name was registered with a trade mark owner’s name in mind in the hope and expectation that confused Internet users searching for information about the business activities of the trade mark owner will be misleadingly directed to the respondent’s parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA, WIPO Case No. D2007-1143).
The Panel further notes that at the top the Website at the Disputed Domain Name, there is a banner that says “The domain boozallen.info is listed for sale. Click here to inquire about this domain name”.
Given the above-mentioned circumstances, the Panel is of the opinion that the Respondent registered the Disputed Domain Name with the Complainant’s trade mark in mind to take advantage of Internet users who mistyped the Complainant’s domain name and was instead diverted to the Respondent’s Website for the Respondent’s commercial gain and profit. This is not considered a “bona fide offering of goods or services” under the Policy.
For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.
It is a well-established principle that registration of a domain name that is confusingly similar to a famous trade mark by any entity that does not have a relationship to that mark maybe sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Given that the Complainant is a global strategy and technology consulting firm with more than 23,000 employees working in offices located on six continents, the Respondent is more likely than not to be well aware of the reputation and business activities of the Complainant. Further, “Booz Allen” is a distinctive term comprising of two individuals’ names. There is no plausible explanation as to how the Respondent could have come up with the confusingly similar Disputed Domain Name but for knowing its association with the Complainant’s mark.
In addition, using a domain name to intentionally attract, for commercial gain, Internet users to a website in an effort to trade on the Complainant’s goodwill is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that the Respondent deliberately registered a domain name confusingly similar to the Complainant’s <boozallen.com> domain name, with an intent to attract or divert Internet users from the Complainant’s website to the Respondent’s parking page for commercial gain. This is a strong indication of bad faith for this Panel.
Any doubt to the Respondent’s motive for registering and using the Disputed Domain Name in bad faith is dispelled by the fact that the Respondent had offered to sell the Disputed Domain Name to the Complainant for USD 1,590, which is far in excess of the Respondent’s out-of-pocket costs in registering the Disputed Domain Name. This constitutes further evidence that the Respondent registered the Disputed Doman Name in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for profit.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 Name, <boozallen.info>, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: June 20, 2013