WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booz Allen Hamilton Inc. v. Human Works Inc.
Case No. D2002-0656
1. The Parties
Complainant is Booz Allen Hamilton Inc., a Delaware corporation, with its principal place of business at 101 Park Avenue, New York, New York 10178, United States of America. Complainant is represented by Robert W. Sacoff, Esq. and Bradley L. Cohn, Esq., of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 South Wacker Drive, Suite 5000, Chicago, Illinois 60606. Respondent is Human Works Inc., whose address is Lucky Apt. 102-310, Dogok1-dong, GangNam-gu, , Seoul 135-858, Republic of Korea.
2. Domain Name and Registrar
The domain name in issue is .
Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada is the registrar for the domain name .
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on July 12, 2002, via email, and on July 15, 2002, in hard copy form.
The Respondent in the Complaint as filed was given as Booz, Inc.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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") . Complainant has made the required payment to the Center.
The Center transmitted via email to Tucows, Inc. a request for registrar verification in connection with this case. On July 16, 2002, Tucows, Inc. transmitted via email to the Center, its Verification Responses, (1) confirming that a copy of the Complaint had been received; (2) that the domain name is registered with Tucows Inc.; (3) advising that the Respondent Booz, Inc. is not the current registrant of the domain name in dispute. The current registrant is Human Works Inc.; (4) that the details of the registrant are: Human Works Inc., Lucky Apt. 102-310 Dogok1dong Gang Nam-gu, Gang Nam-gu, Seoul, 135-858 Korea. The Administrative Contact and Technical Contact are Park, minkyu lawyer@, Lucky Apt. 102-310 Dogok1dong Gang Nam-gu, Gang Nam-gu, Seoul, 135-858 Korea; (5) Tucows Inc. confirmed that the UDRP applies as per section 7 of the Registration Agreement; (6) the domain name is currently on "Registrar Lock"; (7) the Agreement is in English; (8) the jurisdiction at the location of the principal office of the Registrar for court adjudication applies as per section 7 of the Registration Agreement.
On July 19, 2002, the Center requested the Complainant to file an amendment to the Complaint listing the Registrant Human Works Inc. as the Respondent and making all necessary amendments.
The Center received the Complainant's Amended Complaint by e-mail on July 25, 2002, and in hard copy on July 26, 2002.
On July 30, 2002, the Center transmitted the Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent via post, facsimile and email to the address identified in the Complaint and transmitted a copy by e-mail to the Complainant. The Center advised that (1) the Response was due by August 19, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondent�s default as it considers appropriate, (4) Complainant had elected for the matter to be decided by a single member panel, (5) the fees for the administrative proceeding will be paid in their entirety by Complainant unless the Respondent chooses to have the case decided by a three-member panel, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at postal and email addresses, a stated telephone number and fax number.
On August 19, 2002, the Center received the Response by e-mail. The Center received the hard copy of the Response on August 27, 2002.
On August 27, 2002, the Center forwarded an Acknowledgement of Receipt of Response to the parties by e-mail.
On September 9, 2002, the Center transmitted to the parties via email Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Ross Carson had been appointed as the single panelist, and the decision was due September 23, 2002. Also on September 9, 2002, the Center transmitted the file in the case via e-mail and courier to Mr. Carson.
4. Factual Background
The Trademarks
Complainant advises that Complainant has been using its name and mark -- Booz∙Allen & Hamilton -- in connection with its management consulting services since at least 1942. In the past fiscal year alone, which ended on March 31, 2002, the firm spent at least $1.1 million dollars in advertising its services under its "Booz∙Allen & Hamilton" name and mark, and earned more than $1.5 billion dollars in sales revenue from consulting services provided under the name and mark. Complainant submits that the name "Booz∙Allen & Hamilton" -- and its shortened forms "Booz∙Online", "Booz∙Allen", and "Booz" -- have acquired strong secondary meaning among consumers of the firm's services.
Booz∙Allen has registered its well-known "Booz∙Allen & Hamilton" mark in numerous countries throughout the world. A chart summarizing these registrations is attached as Annex F to the Complaint. Booz∙Allen is the owner of U.S. Registration No. 1,634,966 for the service mark "Booz∙Allen & Hamilton" in Class 35, pertaining to management and consulting services in various industries and fields of business, and in Class 42, pertaining to consulting services in the field of computer systems development, engineering and integration. Copies of the Registration and Notice of Renewal are attached as Annex G to the Complaint.
Booz∙Allen is also the owner of U.S. Registration No. 888,837 for the service mark "Booz∙Allen & Hamilton" in Class 101, pertaining to professional counseling on organization and general management problems. Copies of the Registration and Notice of Renewal are attached as Annex H to the Complaint.
In 2000, Booz∙Allen obtained South Korean Registration No. 65418 for the service mark "Booz-Allen & Hamilton" in International Class 35, for "advertising planning, management and technology consulting services and economic forecasting." A copy of the South Korean Certificate of Registration No. 65418 is attached as Annex I to the Complaint.
Complainant advises that no other entity has registered "Booz" as a trademark or service mark in the United States or South Korea.
5. Parties� Contentions
A. Complainant
(1) The domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain name;
(3) The domain name was registered and is being used in bad faith.
(1) Identical or Confusingly Similar
Complainant submits that the domain name is confusingly similar to "Booz∙Online", "Booz Allen", and "Booz Allen Hamilton" -- the names and service marks under which Complainant has done or does business throughout the world.
Complainant advises that WIPO recently held that is confusingly similar to Booz Allen's mark "Booz∙Online". See Booz∙Allen & Hamilton, Inc. v. Servability Ltd. (WIPO Case No. D2001-0243). A copy of this decision is attached as Annex C to the Complaint. In that proceeding, WIPO also ruled that the registrant of had registered and used that domain name in bad faith, and ordered the domain name transferred to Booz Allen. Due to administrative error by the domain name registrar, however, the domain name was instead made available to the public, and obtained by Respondent.
Complainant advises that Booz Allen was founded over 60 years ago and is a leading management and technology consulting firm with more than 10,000 employees working in offices located on six continents. The firm provides services under its registered service mark "Booz∙Allen & Hamilton" and the shortened forms of that mark -- "Booz Allen" and "Booz" -- to corporate and government clients around the world. The public refers to and recognizes Booz Allen simply by the shortened name "Booz," as evidenced by sample articles in Consulting Magazine, attached as Annex D to the Complaint.
As noted under the above heading "The Trademarks", Booz Allen advertises its services on the Internet under the names and marks "Booz Allen" and "Booz Allen Hamilton". Booz Allen has also advertised its services under the mark "Booz∙Online," and the domain name directs to Booz Allen's web site. Complainant has been using its name and mark -- Booz∙Allen & Hamilton -- in connection with its management consulting services since at least 1942.
In the past fiscal year alone, which ended on March 31, 2002, the firm spent at least $1.1 million dollars in advertising its services under its "Booz∙Allen & Hamilton" name and mark, and earned more than $1.5 billion dollars in sales revenue from consulting services provided under the name and mark. Accordingly, the name "Booz∙Allen & Hamilton" -- and its shortened forms "Booz∙Online", "Booz∙Allen", and "Booz" -- have acquired strong secondary meaning among consumers of the firm's services.
Booz∙Allen's trademarks are discussed under the heading "The Trademarks" above and details are provided in Annexes F to I to the Complaint..
Complainant submits that "Booz" is not an English word with any meaning. (Complainant notes that the slang for alcoholic beverages is spelled "booze," not "booz"). Rather, "Booz" is the highly distinctive first word of Booz Allen's well known firm name and service mark. As Booz Allen frequently has used or uses the shortened forms of the mark "Booz∙Online", "Booz Allen", and "Booz" in connection with its services, it is highly likely that the public would mistakenly believe a website with the domain name to be affiliated with Booz Allen (Annex C to the Complaint).
(2) Rights or Legitimate Interests
Complainant submits that there is no evidence that Respondent, Human Works Inc., has been commonly known either by "Booz" or by the Domain Name prior to Booz Allen's use. Nor is Respondent making a legitimate, non-commercial or fair use of "Booz" or the Domain Name.
Human Works Inc. is not a licensee of Booz Allen nor is it otherwise authorized by Booz Allen to use all or part of Booz Allen's name or registered service mark "Booz∙Allen & Hamilton."
(3) Registered and Used in Bad Faith
Complainant submits that Respondent registered and is using the Domain Name in bad faith. In mid-May 2002, Booz Allen sent a cease-and-desist letter, pointing out its trademark rights, to Respondent's predecessor, Booz Inc., a South Korean entity then identified as the registrant of . When no satisfactory reply was received, on Friday, July 12, 2002, Booz Allen filed the initial Complaint in this matter against Booz Inc. Booz Allen simultaneously transmitted this Complaint electronically to Booz Inc. at the e-mail address identified in the Domain Name registration, minibabylove@. Attached as Annex J to the Complaint is the WHOIS report print-out showing Booz Inc. as the recent registrant of and a print-out of the e-mail transmission to Booz Inc. on July 12, 2002.
The Domain Name registrar's current WHOIS report shows that three days later, on July 15, 2002, the domain name registration was amended. Although the available data is not clear as to exactly what was amended, it would appear that, with the UDRP complaint in hand, Booz Inc. transferred the Domain Name to a new entity called "Human Works Inc," also of Seoul, Korea. On July 19, 2002, the Center sent Booz Allen's counsel a notice that the Domain Name was now held by Human Works Inc, thereby requiring Booz Allen to file this amended Complaint.
Upon receipt of that notification on July 19, 2002, Booz Allen's counsel immediately checked the Internet and confirmed that the URL based on the Domain Name still pointed to Booz Inc.'s web site. Complainant submits that Booz Inc. made a sham conveyance of this Domain Name to the current Respondent in an attempt to evade application of the Uniform Domain Name Dispute Resolution Procedures. As of the date of the Complaint, now pointed to a page stating "Forbidden: You don't have permission to access / on this server". See Annex K to the Complaint. Complainant submits that this additional post-Complaint misconduct, by which Booz Inc. and Respondent seek to evade the rules, is apparent and transparent.
Misleading Suggestion of Affiliation with Booz Allen
Complainant submits that sometime in the winter or spring of 2002, Booz Inc. put up a web site at "" under the name "Booz Consulting." At that time, Booz Inc. knew or should have known of Booz Allen's U.S. and South Korean prior and public registrations of the service mark "Booz∙Allen & Hamilton." Booz Allen is an internationally famous consulting firm and a well-known name and mark in South Korea, where Booz Inc. and Respondent are located. The firm's South Korean office has operated under the name "Booz∙Allen & Hamilton" for over five years, currently has 18 employees, and last fiscal year alone earned more than $3 million dollars in sales revenues. Clients of Booz Allen's South Korean office include the South Korean government.
According to Booz Inc.'s web site, Booz Consulting purportedly performs e-mail advertising and promotion services. A print-out of Booz Inc.'s "" home page is attached as Annex L to the Complaint. Notably, those services parallel Booz Allen's use and South Korean registration of its name and mark for advertising planning and technology consulting services.
Complainant submits that Booz Inc.'s "" web site is also calculated to project a false impression of association with Booz Allen. The web site is entirely in English, not Korean. The "Company" page displays a banner at the top featuring a street sign that reads: "WALL ST", thus creating an obvious connection with New York City, Booz Allen's international headquarters. A print-out of this web site page is attached as Annex M to the Complaint.
False Contact Information
Complainant advises that in the "Privacy Policy" for its "" web site, Booz Inc. lists an address and telephone number for contact. The address listed is: "Booz Consulting, #402, Dongin 2 ga 19 Bunji Junggu Daegu, South Korea." A print-out of Booz Inc.'s "Privacy Policy" web page is attached as Annex N to the Complaint. In fact, however, this address is false. When Booz Allen tried to send Booz Inc. a cease-and-desist letter at the identified address, Federal Express refused to deliver the package, stating that there was no Booz Consulting operating at that address.
Complainant submits that the telephone number listed on Booz Inc.'s web site is "823-1771." This telephone number is also false. Federal Express tried to contact Booz Consulting using the number in the web site, but discovered that this was an incorrect telephone number. Federal Express also sent a telegram to Booz Inc.'s address identified in the WHOIS report for , asking Booz Inc. to provide its telephone number. Federal Express never received a response to its telegram.
Complainant submits Federal Express' experience is consistent with the investigation by Booz Allen's South Korean office, which confirmed that there is not even a telephone listing for a "Booz Consulting".
Complainant submits that Booz Inc. apparently did receive the cease-and-desist letter Booz Allen sent by e-mail to info@. Booz Inc. subsequently called Booz Allen and said it would sell Booz Allen the domain name, but hung up when Booz Allen offered to pay $500 to cover Booz Inc.'s out-of-pocket costs and expenses.
B. Respondent
The Respondent avers that on June 29, 2002, the Respondent agreed on the contract for the purchase of the domain name with the previous owner, Booz Inc. (Young-in Jo). A copy of the contract is attached as Annex 1 to the Response. Respondent advises that on July 12, 2002, Respondent paid USD $12,500 to the previous owner, Booz Inc. (Young-in Jo) and obtained full ownership of the domain name on July 14, 2002, (Korean time). (see Annexes 2). The Complainant filed the Complaint against the previous owner, Booz Inc., Young-in Jo, and not against the current owner, the Respondent
Respondent submits that the Complaint indicates that the Complainant had won the domain dispute case (WIPO Case No. D2001-0243) on February 15, 2001, (see Annex 3 to the Response) and it was ordered that the domain name to be transferred from the original owner, Mr. James Kent from Servability Ltd. The Complainant had been managing the domain name since then, but the domain name was carelessly dropped. The Complainant has argued that the registrar should be responsible for this accident disregarding the fact that the management of a domain name should be handled by the registrant and it is the registrant�s responsibility to renew the domain name by paying the renewal fee before it expires. Respondent submits that in order to take the domain name away from the Respondent, the Complainant is trying to exploit this domain name dispute through WIPO to shift the responsibility for the loss of the domain name onto the Respondent by placing all the responsibility on the registrar while it is Complainant's responsibility. Respondent avers that he is currently incurring a huge amount of financial and emotional damage because of the legal action conducted by the Complainant.
Respondent advises that as the Respondent is required to respond to statements and allegations made in the Complaint within 20 days in order not to lose the domain dispute case, the Respondent has paid USD $1,500 for the interpretation and is now submitting this response.
Respondent submits that the most important fact is the Complainant�s carelessness of managing the domain name and that the Complainant does not own the trademark with the name "booz" in the U.S. Respondent submits that it has been described in the Complaint that there are no organizations or individuals who registered a trademark or service mark with the name "booz" in the U.S. or Korea.
Respondent submits that in the U.S., Booz is a well known surname and it cannot be registered as trademark. For this reason, Booz∙Allen & Hamilton, Inc. also could not register the name as its own trademark. Also, according to the allegation in the Complaint, words are included in "Booz∙Allen & Hamilton , Inc." Respondent submits that the Complainant has not brought a court action for those web sites that contain "Allen" or "Hamilton" in the domain name because the Complainant knows that it is impossible to obtain ownership of those names. Respondent avers that the names "Booz", "Allen", and "Hamilton" cannot be owned by any organization or individual in the U.S. and this is clearly stated in the decision in the case of (NAF Claim No. FA0205000114330), which states that those names that cannot be trademarked are not allowed to be owned by any organization or individual. (see Annex 4 to Response).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and principles of law that it deems applicable"..
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity to a trademark or service mark
The Complainant has been using its name and mark BOOZ ALLEN & HAMILTON in connection with its management consulting services since at least 1942. In the last fiscal year which ended on March 31, 2002, the Complainant spent at least 1.1 million dollars in advertising its services under its BOOZ ALLEN & HAMILTON name and mark. The Complainant earned more than 1.5 billion dollars in sales revenue from consulting services provided under the name and mark. The Complainant is also known by the shortened form of the name BOOZ ALLEN and BOOZ. Annex D to the Complaint includes a sample of articles about the Complainant in which the Complainant is referred to by the foreshortened name BOOZ. The Complainant advertises its services on the web under several names including BOOZ ONLINE.
The Complainant has registered its well known trademarks BOOZ ALLEN & HAMILTON in numerous countries in the world. A chart summarizing these registrations is attached as Annex F to the Complaint. The trademark BOOZ ALLEN & HAMILTON is registered or applied for in relation to management consulting services in various industries and fields of business in Argentina, Australia, Canada, Chile, Columbia, European Union, Hong Kong, India, Indonesia, Japan, Korea, Norway, Peru, Poland, Russia, Singapore, Switzerland, United Arab Emirates, United States of America and Venezuela.
The trademark BOOZ ALLEN & HAMILTON was registered as Korean Trademark Registration Number 65418 on December 20, 2000, in Class 35 - Advertising, planning, management and technology services and economic forecasting (Annex I to Complaint).
The domain name in dispute was the subject of a UDRP decision in which the Panel found that was confusingly similar to BOOZ-ONLINE a common law trade-mark. Booz-Allen & Hamilton, Inc. v Servability Ltd. (WIPO Case No. D2001-0243).
The evidence filed by the Complainant in this case shows reference to the Complainant company is shortened to BOOZ ALLEN and foreshortened to BOOZ. Users of the Internet looking for BOOZ ALLEN & HAMILTON are likely to enter BOOZ the shortened form in the name BOOZ ALLEN & HAMILTON and connect to Respondent's website. Confusion is far more likely to occur when the first part of trademarks and domain names are identical. The Panel finds that the domain name is confusingly similar to the common law trademark BOOZ and BOOZ ONLINE.
Rights or Legitimate Interests
Following is a chronology of events relating to the domain name in dispute .
December 8, 2001
Booz Inc. registered the domain name . Annex A, Annex J
June 4, 2002
Booz Inc. is still shown as the registrant of the domain name . Annex J
July 12, 2002
The Complaint was filed by e-mail with Domain Disputes and served electronically on the Registrar and the Registrant. Annex J.
July 12, 2002
The Respondent Human Works Inc. states that the domain name was purchased from Booz, Inc. (Response, p. 3) for USD $12,500.
July14, 2002
The Respondent Human Works Inc. states that Human Works Inc. acquired full ownership of the domain name . (Response p. 3)
July 16, 2002
The Registrar TUCOWS INC. advised Domain-Disputes that the new registrant of is Human Works Inc. of Seoul, Korea. The Record of was last updated on July 15, 2002.
July 19, 2002
Domain Disputes advised the Complainant that the domain name was now registered in the name of Human Works Inc. The Complainant was required to file an amended Complaint.
July 19, 2002
The Complainant's representative checked on the Internet and confirmed that the URL based on the domain name still resolved to Booz Inc.'s website.
Booz Inc.'s website included the heading "Welcome to Booz Consulting". (Annex L). Booz Consulting purportedly performs e-mail advertising and promotional services.
Booz Inc.'s website is entirely in English, not Korean. The "Company" page on the website displays a banner at the top featuring a street sign that reads "WALL ST", thus creating an obvious connection with New York City, Booz-Allen's international headquarters (Annex M).
July 24, 2002
As of July 25, 2002, resolves to a page stating "Forbidden: You don't have permission to access/on this server" (Annex K).
Neither the original registrant Booz Inc. nor the new registrant Human Works Inc. is or was authorized by the Complainant to use a domain name including BOOZ. The Respondent Human Works Inc. confirms that the transfer of the domain name occurred on July 14, 2002, Korea time or July 15, 2002, as shown by the records of the Registrar. The original registrant's website resolved to Booz Consulting as late as July 17, 2002. The Respondent Human Works Inc. stated in its response that Human Works Inc. was not aware of Booz-Allen & Hamilton, Inc. The Complainant Booz-Allen & Hamilton, Inc. has and had an office in Seoul, Korea for five years operating under the name Booz-Allen & Hamilton. The Korean office currently has 18 employees and in the last fiscal year alone earned more than 3 million dollars in sales revenues. In the year 2000, Booz-Allen obtained South Korean Registration 65418 for the service mark "Booz-Allen & Hamilton" in International Class 35, for "advertising, planning, management and technology consulting services and economic forecasting".
The Respondent Human Works Inc. states in paragraph [12] of the Response that the Respondent was not capable of communicating in the English language. The Panel finds that the Respondent has provided no evidence as to why the Respondent acquired the domain name which at the date of registration resolved to an English language web site.
The web site of the Registrant Booz Inc. referred to Booz Consulting. The Booz Consulting web page was active at the date of July 15, 2002, when Human Works Inc,. acquired ownership of the domain name . The electronic filing of the original Complaint on the then registrant Booz Inc. was filed three days earlier on July 12, 2002. The Panel finds that on a balance of probabilities Human Works Inc. was aware that the domain name was the subject of a pending administrative proceeding and was not transferable by the previous registrant Booz Inc. pursuant to Paragraph 8(a) of the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name .
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets forth a series of factual circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances listed in Paragraph 4(b) of the Policy are not limiting and other circumstances may constitute evidence of registration and use of the domain name in bad faith.
The registrant at the time of the electronic service of the initial Complaint was Booz Inc. The web page operated by Booz Inc. used the name Booz Consulting. One of the web pages included a banner with the street sign WALL STREET on the banner. The registrant Booz Inc. was using the domain name to attract internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of the website . The website was continued by Human Works Inc. for a short period after transfer of the mark . The Panel finds that Human Works Inc. acquired the domain name for the purpose of interfering in the pending administrative proceeding naming Booz Inc. as the Respondent.
The right of the original registrant Booz Inc. to transfer of the domain name registration to another holder during a pending administrative proceeding is prohibited by Paragraph 8(a) of the Policy. The Panel finds that the inference to be drawn from the evidence is that Human Works Inc. was aware of the pending administrative proceeding. There is no meaningful evidence that the Respondent has a legitimate interest in the disputed domain name. Wal-Mart Stores, Inc. v James Cann and Save Family Businesses Panel, WIPO Case No. D2000-0830. The Panel finds that the Respondent Human Works Inc. acquired the domain name in dispute from Booz Inc. for the purpose of interfering with the pending administrative proceeding commenced against the previous registrant Booz Inc.
The use of the confusing domain name on the Booz Consulting website both before and after the transfer constituted use in bad faith. The subsequent passive holding of the domain name for the purpose of interfering with the administrative proceeding also constitutes use of the domain name in bad faith.
The Panel finds that the Respondent acquired and is using the domain name in bad faith.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: September 23, 2002
Full & Egal Universal Law Academy