The Complainant is Clarkston-Potomac Group, Inc. of Durham, North Carolina, United States of America (“United State”), represented by Hutchison PLLC, United States.
The Respondent is Clarkston Strategy Consultants, LLC of Montreal, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Eranet International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2018.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 25, 2018. 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 alleges that is widely recognized as one of the leading consultancy firms in the life sciences field in the United States. Screen shots of its website are annexed at Annex 3 to the Complaint. It has achieved numerous third party awards, recognition and news coverage, examples of which are annexed to Annex 6 to the Complaint. It has also been recognized as one of the top management consulting companies by Forbes Magazine for several years. This can be seen at Annex 5 to the Complaint. It has also been recognized for consulting and training excellency by Consumer Goods Technology Magazine, Gartner Research and Learning Elite, as well as by numerous clients.
It has been trading using the trade mark CLARKSTON CONSULTING since as early as April 2002. Copy of United States trade mark application number 87/884527 is attached at Annex 4, to the Complaint. Since then the Complainant has provided services to over 500 life sciences and consumer product clients in nearly every United States state and in at least 16 different countries. Evidence of this is given in an affidavit sworn by Faith Kosobucki, the Complainant’s Chief Financial Officer, which is exhibited at Annex 5 to the Complaint. According to Ms. Kosobucki the Complainant first became aware of the Respondent’s registration and use of the disputed domain name in December 2017, when it was contacted through its website by several people who were trying to confirm whether job offers they received from “Clarkston Consultants” was a legitimate offers. Since then the Complainant has been contacted by a number of individuals enquiring about solicitations, job offers and other communications received from the Respondent. These individuals believe that the communications has originated from the Complainant as it continues until at least April 2018.
There is also evidence that on at least one occasion the Respondent impersonated an employee of the Complainant in a fraudulent solicitation and job offer through Linkedin. The Complainant stresses that the Respondent has no association or affiliation with the Complainant and is not licensed to use the trade mark CLARKSTON CONSULTING.
In the absence of a Response the Panel proceeds to decide this Complaint on the basis of the evidence as adduced by the Complainant which it accepts as true. The disputed domain name was registered on December 11, 2017 and resolves to an active website with a similar look to that of the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant submits:
(1) The disputed domain name is identical or confusingly similar to the trade mark CLARKSTON CONSULTING in which the Complainant has rights.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The content contained on the Respondent’s website has not appeared to be connected to any legitimate business offerings.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant relies upon the evidence of the Respondent sending out unsolicited fake job offers and employment information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Based upon the evidence set out above the Panel finds that the Complainant has established common law trademark rights in the CLARKSTON CONSULTING mark. The disputed domain name differs from the Complainant’s trade mark in that the domain name refers to “consultants” whereas the trade mark refers to “consulting”. In the Panel’s view this distinction is insufficient to distinguish the trade mark from the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trade mark CLARKSTON CONSULTING in which the Complainant has rights. B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent has rights or legitimate interests in respect of the disputed domain name and in particular there is no evidence of a bona fide offering goods and services using the disputed domain name. The only results that are returned from a search of the Respondent’s name “Clarkston Strategy Consulting” relates to scam alerts and traffic statistics associated with the disputed domain name as set out in Annex 7 to the Complaint.
The Respondent has created content on its website set out at Annex 8 to the Complaint. This does not appear to be connected to any legitimate offerings and is replete with errors and incomplete sentences. The website also references individuals who do not seem to exist or have no apparent relationship with the Respondent. Clearly, the use of the disputed domain name in connection with a fraudulent email scheme cannot give rise to any rights or legitimate interests.
The Panel, in the absence of evidence to the contrary, accepts these submissions made by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant submits that the Respondent registered the disputed domain name in bad faith with the expressed intention to trade off the good will associated with the Complainant’s trade mark CLARKSTON CONSULTING. It points out that the disputed domain name is registered more than 15 years after the Complainant first began trading using the mark. The disputed domain name is not affiliated with any potential or ongoing legitimate business but is being used to disrupt the Complainant’s business for the benefit of the Respondent.
In particular the Complainant relies upon the evidence that the Respondent is using the domain name to hold itself out as the Complainant and to send unsolicited fake job offers and employment information. It also uses evidence that the Respondent has posed as a current employee of the Complainant in purpose of falsely representing that communications originated with the Complainant when in fact they originated with the Respondent. The Panel finds the evidence relating to the Complainant’s employee referred to above is evidence of a fake representation that it is associated with the Complaint. In the Panel’s view this is clear evidence of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent. 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.
Clive Duncan Thorne
Sole Panelist
Date: July 9, 2018
Full & Egal Universal Law Academy