The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America (“US”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, US.
The Respondent is Yitao of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
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 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2013.
The Center verified that the Complaint together with the amended 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 May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on June 10, 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. 4. Factual Background
The Complainant is a global strategy and consulting firm with over 23,000 employees. It has used the name BOOZ ALLEN HAMILTON for its consulting services since at least 1942. The Complainant has extensive registered trade mark protection for the mark BOOZ ALLEN HAMILTON.
The Complaint does not provide any information about the Respondent’s business but it is the Registrant of the disputed domain name which was registered on January 12,2013. The Complaint did not append any pages of the website hosted at the site of the disputed domain name. However, the Panel has looked at the website and noted that the home page comprises a directory page containing links to third parties providing a number of services including management and consultancy services.
On March 19, 2013, the Complainant’s lawyers wrote to the party whom they believed to be the Registrant of the disputed domain name notifying it of their client’s alleged rights and seeking a transfer of the disputed domain name. The response was “$1300 for ”. 5. Parties’ Contentions A. Complainant
(1) The disputed domain name is identical or confusingly similar to a name in which it has rights.
In support of its claim to have rights in BOOZ ALLEN HAMILTON, the Complainant has produced a series of valid and subsisting trade mark registrations in a number of jurisdictions for BOOZ ALLEN HAMILTON (as well as for BOOZ-ALLEN & HAMILTON). The Complainant also says that it has spent many years promoting this name through extensive marketing efforts and that its trade mark rights now comprise an extremely valuable asset.
The Complainant draws attention to some of the many UDRP decisions which have held that, for the purpose of assessing whether a mark is identical or similar to a disputed domain name, the generic top-level domain (“gTLD”) (that is “.biz” in the present proceedings) is not taken into account.
(2) The Respondent has no rights or legitimate interests in the disputed domain name.
In support of this contention, the Complainant draws attention to the fact that when it wrote, in March 2013, to a party it believed to be the Respondent seeking a transfer of the disputed domain name, the party only agreed to do so in return for a payment of USD1,300.
The Complainant says that it has not authorized or permitted the Respondent to use its BOOZ ALLEN HAMILTON mark or to apply for any domain name incorporating the mark. It says that the Respondent is not commonly known by the disputed domain name and that, so far as the Complainant can ascertain, it has not acquired any rights to use the name.
(3) The Respondent has registered and is using the disputed domain name in bad faith.
The Complainant asserts that the Respondent has had legal constructive notice of the Complainant’s trade mark rights since at least 1968 when the Complainant first filed an application to register BOOZ ALLEN HAMILTON as a trade mark in the United States.
The Complainant says that the Respondent, notwithstanding its actual and constructive notice of the Complainant’s prior rights, registered the disputed domain name intentionally in order to attract Internet users to the Respondent’s webpage by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant says that bad faith registration is also evidenced by the request for payment of USD1300 made to the Complainant in return for a transfer to the Complainant of the disputed domain name, which sum must be substantially greater than the Respondent’s out-of-pocket costs of registering it.
The Complainant says that, having regard to its extensive global use of BOOZ ALLEN HAMILTON, it is not possible to think of any legitimate use to which the Respondent could put the disputed domain name. In this respect, the Complainant cites a number of earlier UDRP decisions which found that, where well-known marks have been registered by respondents, the panels in those cases were unable to find any right or legitimate use to which the domain names might be put and thereby found that the use of the domain names in issue was in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint;
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in BOOZ ALLEN HAMILTON. It has appended copies of many of its trade marks to the Complaint. To take one of many examples, it has a US trade mark for BOOZ ALLEN HAMILTON, registration no. 888,837, dated March 31, 1970, for, amongst other services, professional counseling on organization and generally.
For the purpose of assessing whether the trade mark is identical or confusingly similar to the disputed domain name, it is appropriate to disregard the gTLD “.biz”, in line with well-established practice in this respect. It is also appropriate to disregard the spaces between the words BOOZ ALLEN HAMILTON as the domain name system does not recognize spaces as a permissible symbol.
Accordingly, the Panel accepts that the disputed domain name is identical to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertion that it has not licensed or otherwise permitted the Respondent to use the BOOZ ALLEN HAMILTON mark and that the Respondent is not commonly known by the disputed domain name. That there is no evidence that it has acquired any trade mark or service rights to use that name nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services or that it might otherwise be able to assert that it has a legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
As at the date of registration of the disputed domain name, namely January 2013, the Complainant had acquired extensive trade mark rights. Although the Panel is doubtful about the Complainant’s contention that the Respondent had constructive notice of the Complainant’s rights since at least 1968, it is not necessary for the Complainant to go that far. As at the date of registration of the disputed domain name, in January 2013, it is not possible, as the Complainant has said, to conceive of an innocuous reason for the Respondent’s registration of the disputed domain name. The distinctive character of the Complainant’s marks and the reputation of the Complainant is such that it cannot have been an accident that the disputed domain name is identical to the Complainant’s marks. No explanation to the contrary has been volunteered by the Respondent. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
As the Panel has explained above, the website hosted at the disputed domain name comprises a directory page containing links to providers of a variety of services, some of which appear to be similar to those offered by the Complainant. Paragraph 4(b)(iv) of the Policy gives, as an example of bad faith use, an intention by a respondent to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or any product or services on it. In fact, it is unlikely that any visitors to the Respondent’s website who were seeking the Complainant would be confused into thinking that they had found the Complainant’s website. But they would have been lured there by the fact that the disputed domain name is identical to the Complainant’s mark and, once there, they may choose to follow the links to other websites rather than try again to find the Complainant’s official website. The examples of bad faith use set out at paragraph 4(b) of the Policy are stated to be without limitation and the Panel finds that the use of the disputed domain name by the Respondent is in bad faith.
As the Complainant has said, an offer by a registrant to sell the disputed domain name for a sum in excess of its out-of-pocket costs directly related to the domain name, where the circumstances indicate that this is the primary reason why the domain name has been registered, is a further example of registration and use in bad faith under the Policy. In the present case, the offer to sell the disputed domain name appears to have been made by a party other than the registrant. In view of the fact that bad faith has been established for other reasons, the Panel makes no specific finding in relation to this part of the Complainant’s submission. 7. Decision
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 be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: June 17, 2013
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