Complainant is McKinsey & Company, Inc. of New York, New York, United States of America (“United States”) and McKinsey Holdings, Inc. of New York, New York, United States, represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Navid Hadzaad of Koenigstein, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with
united-domains AG (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and confirming that the language of the registration agreement for the Disputed Domain Name is German. On August 1, 2016, Complainant submitted a request that English be the language of the proceeding. Respondent did not make a submission in this regard.
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 and 4, the Center formally notified Respondent in both English and German of the Complaint, and the proceeding commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2016.
The Center appointed Peter Wild as the sole panelist in this matter on September 2, 2016. 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
Complainant is a global management consulting firm with over 20.000 employees in more than 60 countries and owns the MCKINSEY and MCKINSEY & COMPANY trademarks. Complainant has offices in Germany, including Berlin, Dusseldorf, Frankfurt, Hamburg, Cologne, Munich and Stuttgart.
Complainant has numerous trademark registrations for MCKINSEY and MCKINSEY & COMPANY, including: Reg. No. 1,965,376 registered in the United States on April 2, 1996; Reg. No. 1,966,624 registered in the United States on April 9, 1996; Reg. No. 39523847 registered in Germany on May 6, 1996; Reg. No. 39523849 registered in Germany on May 3, 1996, Reg. No. 39523850 registered in Germany on May 6, 1996. In a number of earlier UDRP decisions, it was recognized as a famous or well known trademark.
Prior to this Complaint, the Parties had discussed a transfer of the Disputed Domain Name. During such exchange, Respondent admitted that for a limited period, the Disputed Domain Name redirected the user to a website of the “Boston Consulting Group”, which is one of Complainant’s competitors. Respondent also stated that he knew Complainant and its trademarks and claimed that he wanted to build a non-profit website for career counseling. The assignment to Complainant was not followed through.
The Disputed Domain name was registered on March 12, 2016. At the time of the decision, the Disputed Domain Name resolves to a registrar parking page. 5. Parties’ Contentions A. Complainant
According to Complainant, the Disputed Domain Name is identical to Complainant’s MCKINSEY trademark and confusingly similar to its MCKINSEY & COMPANY trademarks, plus the generic “.careers” generic Top-Level Domain (“gTLD”) extension which cannot be taken into consideration when judging confusing similarity.
Complainant refers to earlier UDRP decisions according to which the trademark MCKINSEY is famous or at least well-known and claims that there is no evidence that Respondent has ever been known by the Disputed Domain Name and Respondent cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name.
Finally, Complainant contends that the Disputed Domain Name was registered and used in bad faith, especially given the fact that Respondent has used the Disputed Domain Name to redirect visitors to “”, the website for one of Complainant’s direct competitors. Complainant does not submit evidence of such redirection, but Respondent acknowledges this in his email of April 19, 2016.
According to Complainant, Respondent’s mere holding of the Disputed Domain Name is itself bad faith use in view of the renown of the MCKINSEY trademarks and absence of likely legitimate uses by an unauthorized party like Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding and Consolidation of Complainant
The Complaint was filed in English, while the registration agreement is in German. Complainant, upon the Center’s request, reiterated the reasons why the language of the procedures should be English. In particular, Complainant refers to correspondence with Respondent which was held in English. After review of the Respondent’s correspondence, the Panel agrees that Respondent appears to have sufficient knowledge of the English language. The Disputed Domain Name contains an English word (“career”) and Respondent did not reply to the Center’s email regarding the language of proceedings. The Panel is satisfied that there are sufficient circumstances that English is the appropriate language of the proceeding and exercises its discretion under paragraph 11(a) of the Rules to conduct the proceeding in English (see DZ Bank AG v. Bentz,WIPO Case No. D2006-0414).
The Panel notes that the Complaint has been filed by two distinct corporate entities, nevertheless, the Panel finds that consolidation of Complainant is appropriate in the present case as the two companies are affiliated and part of the same corporate group. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Disputed Domain Name’s only distinctive element MCKINSEY is identical to Complainant’s trademarks.
The Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
Whether Respondent has rights or legitimate interests in the Disputed Domain Name must be assessed taking into account the manner in which Respondent uses the Disputed Domain Name. In the circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible. Neither a temporary redirection to a website of a competitor of Complainant nor the resolving to a Registrar parking page show a legitimate interest in the Disputed Domain Name, there is no reference to any services which could be legitimately connected to Complainant. Further, Respondent is not commonly known by the Disputed Domain Name. In the absence of Respondent’s comments, the Panel finds that Complainant has satisfied its burden to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
As discussed in Section 5.A. above, prior UDRP panels found Complainant’s trademark MCKINSEY to be well known and the Panel in the present case concurs. The registration of a domain name which is identical or confusingly similar to a widely-known trademark has repeatedly been found to establish a respondent’s bad faith in registration and use (see Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384). Respondent conceded that he knew Complainant; there is no evidence to the contrary and therefore the Panel accepts Complainant’s contentions in this regard that the Disputed Domain Name was registered in bad faith.
There is also evidence that the Disputed Domain Name was, for a limited time, redirecting to a website of one of Complainant’s competitors. This by itself establishes bad faith as it created a danger of confusion among the users.
Even without such redirection, as discussed in Telstra Corporative Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it is not necessary for a respondent to actively use the disputed domain name, but that passive holding could establish use in bad faith as well. In the present case, the conditions for such finding are present: Complainant’s trademark is widely known, Respondent did not participate in the proceeding and gave no plausible explanation for selecting the Disputed Domain Name (see also Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875).
On this basis, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and the third element of the policy is met. 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 Complainant McKinsey & Company, Inc.
Peter Wild
Sole Panelist
Date: September 12, 2016
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