The Complainant is Booz Allen Hamilton Inc. of McLean, Virginia, United States of America (“United States” or “USA”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is Hongjie Shi of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2015. On June 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2015, 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 June 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 21, 2015. 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 Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is the owner of a number of national and regional registered trademarks around the word including the words “Booz Allen”, such as:
- No 3 820 454 BOOZ ALLEN (word), Registered at the United States Patent and Trademark Office (“USPTO”), on July 20, 2010, Classes 35, 42
- No 1096923 BOOZ ALLEN (word), Registered in Benelux on December 23, 2005, Classes 35, 36
- No 1 821 991 BOOZ-ALLEN & HAMILTON (word), Registered in Argentina on October 9, 2001, Class 35
- No 810724 BOOZ-ALLEN & HAMILTON (word), Registered in Australia on October 18, 1999, class 35
- No TMA544503 BOOZ-ALLEN & HAMILTON (word), Registered in Canada on May 3, 2001
- No 1499442 BOOZ-ALLEN & HAMILTON (word), Registered in China on December 28, 2000, Class 35
- No 4096092 BOOZ ALLEN HAMILTON (word), Registered in China on August 7, 2007, Class 35
- No 4096093 BOOZ ALLEN HAMILTON (word), Registered in China on August 7, 2007, Class 42
- No 1499966 BOOZ.ALLEN & HAMILTON (word), Registered in china on November 17, 1999, Class 42
- No 272301 BOOZ ALLEN HAMILTON (word), Registered in Colombia on August 28, 2003, Class 35
- No 658417 BOOZ ALLEN HAMILTON (word), Registered in Chile on February 21, 2003, Class 35
- No 903671 BOOZ-ALLEN & HAMILTON (word), Registered in Chile on May 11, 2010, Class 35
- No 5065347 BOOZ ALLEN HAMILTON (word), Registered as European Community Trademark on March 26, 2007, Classes 16, 35, 42
- No 002386183 BOOZ ALLEN HAMILTON (fig), Registered as European Community Trademark on January 22, 2003, Classes 16, 35, 42
- No 1 615 215 BOOZ-ALLEN & HAMILTON (word), Registered in France on January 29, 1990, Classes 35, 36, 38, 39, 41, 42
- No 200400514 BOOZ ALLEN HAMILTON (word), Registered in Hong Kong on June 13, 2002, Class 42
- No 200400422 BOOZ-ALLEN & HAMILTON (word), Registered in Hong Kong on October 22, 1999, Class 35
The disputed domain name was registered on June 3, 2015. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant is a leading global strategy and technology consulting firm, with more than 23,000 employees working in offices located on six continents. The Complainant has been using the BOOZ ALLEN HAMILTON trademark since 1942, and is also using the shortened version BOOZ ALLEN.
The Complainant is the owner of a number of BOOZ ALLEN trademarks in the UNITED STATES and other countries.
The Complainant has invested many millions of dollars in promoting the BOOZ ALLEN trademarks, and has sold billions of dollars in services under these trademarks. As a result, the BOOZ ALLEN trademarks have become famous and represent extraordinarily valuable goodwill associated with and owned by the Complainant.
The Complainant states that the disputed domain name is virtually identical to the BOOZ ALLEN trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in , as the Complainant has not licensed or otherwise permitted the Respondent to use the trademark or to apply for or use any domain name incorporating or simulating the trademark. The Respondent is not commonly known by and has not acquired any trademark or service mark rights to use the name.
Finally, the Complainant states that the Respondent has registered and is using in bad faith.
The Respondent re-directs visitors to the disputed domain name to another domain name, , where visitors are asked to complete a survey in order to win a USD 100 gift card to Sam's Club, a chain of retail warehouse clubs that offer consumer products in bulk amounts at discount prices. The Complainant concludes that the Respondent may earn a commission for each survey completed, or may be using the scheme to steal visitors' personal information. The Respondent is using the famous BOOZ ALLEN trademarks to lure consumers to a potentially fraudulent survey that is in no way authorized, sponsored or endorsed by the Complainant.
In addition to any actual knowledge that the Respondent may have of the Complainant’s rights in the BOOZ ALLEN trademarks, the Respondent has had legal constructive notice of these trademark rights.
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, and the website to which visitors to are re-directed.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for BOOZ ALLEN (alone and in combination with the word HAMILTON) e.g., Registration No. 3 820 454 BOOZ ALLEN (word), registered on July 20, 2010 at the United States Patent and Trademark Office ( “USPTO”).
The Panel finds that the Complainant has established rights in the BOOZ ALLEN trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.)
The relevant part of the disputed domain name is “boozallen”. The addition of the generic Top-Level Domain “.asia” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
Further, the fact that the Complainant’s trademark BOOZ ALLEN is written in two separate words, whereas the disputed domain name is written as one word, makes no difference. For pure technical reasons, a two letter mark must be either combined with a hyphen in between, or – as in this case – written as one word.
The Panel therefore concludes that is confusingly similar to the Complainant’s trademark BOOZ ALLEN.
Further, the Panel concludes that there are confusing similarities between the Complainant’s trademarks BOOZ-ALLEN & HAMILTON / BOOZ ALLEN HAMILTON, and the disputed domain name . B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to 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.
The Respondent has no rights to use the Complainant’s trademark or variations thereof and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is also nothing on the record indicating that the Respondent is commonly known by the disputed domain name. As such, the Panel finds the Complainant has established a prima facie case on the second element.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, or in any other manner, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case.
The Panel notes that the disputed domain name seems to be used only for re-direction to another domain name and connected website (see further below under: “Registered and Used in Bad Faith). Use of another’s well-known and registered trademark, as well as confusing similarities thereof, to extend the sale of other’s goods and services does not establish rights or legitimate interests.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Although the Complainant’s registration for the BOOZ ALLEN word mark is registered in USA and Benelux, the Complainant also have several BOOZ ALLEN HAMILTON variations thereof registered in China, the home country of the Respondent. The Panel further notes that BOOZ ALLEN (alone and in variations), seems to be well known around the world, including China where the first national BOOZ ALLEN & HAMILTON trademark was registered in the name of the Complainant in 1999.
Without any comments/reply from the Respondent, the Panel cannot draw any other conclusion than that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. See Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921 (bad faith found where “at the time Respondent acquired the name, Complainant’s service mark rights were readily discoverable, the domain name at issue was apparently being used to resolve to a web site for purposes of commercial gain, and … the user was bound to confuse the seller of the services with Complainant”).
The Complainant claims that the Respondent is using the disputed domain name to re-direct visitors to another domain name and website, where visitors are asked to complete a survey in order to win a gift card to a chain of retail warehouse clubs that offer consumer products in bulk amounts at discount prices. The Complainant has provided a screenshot from the other web site. Although the Complainant has not provided any documentation that clearly shows that seeking for automatically transfers a customer to the website with the survey, etc., the Panel has no reason to doubt this claim, especially since the Respondent has not provided any opposite facts of comments.
Again, in the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to the other website. See Popular Enterprises, LLC v. American Consumers First et al.,WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith).
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith within the meaning of 4(b)(iv) of the Policy, and that the Complainant has succeeded in proving the three elements of paragraph 4(a) of the Policy. 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.
Petter Rindforth
Sole Panelist
Date: August 4, 2015
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