The Boston Consulting Group, Inc. v. Alzino VanderWaal
Claim Number: FA2103001937160
Complainant is The Boston Consulting Group, Inc. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), Massachusetts, USA. Respondent is Alzino VanderWaal (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostoncgp.net>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 19, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <bostoncgp.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bostoncgp.net. Also on March 24, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states it is a world-renowned business management consulting firm, with over 90 offices in 50 countries and 14,000 employees. Complainant is recognized as a leading provider of innovative business solutions and for its collaborative approach to complex business issues across a wide range of industries. Complainant has rights in the marks BCG and BOSTON CONSULTING GROUP through their registration in the United States in, respectively, 1974 and 1995. The marks are registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain name is an amalgamation of Complainant’s BCG and BOSTON CONSULTING GROUP marks: it is comprised of the first term of Complainant’s core BOSTON CONSULTING GROUP mark with the letters “C” and “GP”, in a blatant attempt to connote BOSTON CONSULTING GROUP. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not authorized to use Complainant’s marks. Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Instead, the disputed domain name is used to send fraudulent emails. Specifically, Respondent is using the disputed domain name in emails in an attempt to defraud third-parties by sending them invoices for services allegedly rendered by Complainant despite the fact that such services were not rendered and Respondent had no authority to issue such invoices. The signature block of the fraudulent emails displays Complainant’s business name, mark, and the actual address of one of its offices.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent used the disputed domain name in furtherance of a phishing scheme via an email address associated with the disputed domain name. Further, Respondent had actual knowledge of Complainant’s rights in the mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks BCG and BOSTON CONSULTING GROUP and uses them to market consulting services around the world.
Complainant’s registration of its marks dates back to, respectively, 1974 and 1995.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to send fraudulent emails impersonating Complainant’s employees and containing fraudulent invoices. The signature block of the fraudulent emails displays Complainant’s business name, mark, and one of Complainant’s actual physical addresses.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name is an amalgamation of Complainant’s BCG and BOSTON CONSULTING GROUP marks: it is comprised of the first term of Complainant’s BOSTON CONSULTING GROUP mark with the letters “C” and “GP”, in a blatant attempt to connote BOSTON CONSULTING GROUP. The amalgamation of the BOSTON CONSULTING GROUP and BCG marks in the disputed domain name does not distinguish the name from the marks. See Boston Consulting Group v. Michael Stock, FA1902001828952 (Forum March 25, 2019) (finding “the <bostoncg.net> domain name is confusingly similar to the BCG and BOSTON CONSULTING GROUP trademarks, as the name is an amalgamation of the trademarks”; see also The Boston Consulting Group, Inc. v. Karen Sylvester / Latham Inc., FA2005001897134 (Forum June 22, 2020) (holding that the domain name <bostoncgp.com> was confusingly similar to complainant, The Boston Consulting Group’s BCG and BOSTON CONSULTING GROUP marks). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Alzino VanderWaal”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to send fraudulent emails mimicking Complainant’s employees in furtherance of a financial scam. The fraudulent emails contain fraudulent invoices and their signature block displays Complainant’s business name, mark, and one of Complainant’s actual physical addresses. Using a confusingly similar domain name to pass off as a complainant in furtherance of a financial scam may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to send fraudulent emails mimicking Complainant’s employees in furtherance of a financial scam. Using a confusingly similar domain to pass off as an employee of a complainant can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant’s President and CEO). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the signature block of the fraudulent emails displays Complainant’s business name, mark, and one of its actual physical addresses. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostoncgp.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 16, 2021
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