The Boston Consulting Group, Inc. v. Frank Kelechi / Stone Group
Claim Number: FA2105001947588
Complainant is The Boston Consulting Group, Inc. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Frank Kelechi / Stone Group (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bcgonline.us>, registered with NameCheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2021; the Forum received payment on May 25, 2021.
On May 26, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bcgonline.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@bcgonline.us. Also on June 2, 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 July 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, The Boston Consulting Group, Inc., is a world-renowned business management consulting firm. Complainant has rights in the BCG mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,235,760, registered May 1, 2007). Respondent’s <bcgonline.us> domain name is confusingly similar to Complainant’s BCG mark because it fully incorporates the mark and simply adds the term “online” and the “.us” county code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <bcgonline.us> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the BCG mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive and resolves to an error message.
Respondent registered or uses the <bcgonline.us> domain name in bad faith. Respondent disrupts Complainant’s business by passing off as Complainant in emails as part of a phishing scheme. Additionally, the disputed domain name resolves to an inactive webpage. Furthermore, Respondent had actual knowledge of Complainant’s rights in the BCG mark based on the fame of the mark and Respondent’s efforts to pass off as Complainant in emails.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Boston Consulting Group, Inc. (“Complainant”), of Boston, MA, USA. Complainant is the owner of domestic and global registrations for the marks BCG and BOSTON CONSULTING GROUP, which it has continually used since at least as early as 1967 in association with its provision of business management and strategy consulting services. Complainant also operates an official BCG website at <bcg.com>.
Respondent is Frank Kelechi / Stone Group (“Respondent”), of Lagos, Nigeria. Respondent’s registrar’s address is not listed however their phone contact number corresponds to California, USA. The Panel notes that the disputed domain name was registered on or about November 4, 2019.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Complainant asserts rights in the BCG mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,235,760, registered May 1, 2007). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bcgonline.us> domain name is confusingly similar to Complainant’s BCG mark because it fully incorporates the mark and simply adds the term “online” and the “.us” ccTLD. The addition of a term and ccTLD to a mark is insufficent to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see additionally Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The Panel here finds that the disputed domain name is confusingly similar to the BCG mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <bcgonline.us> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the BCG mark. Under Policy ¶ 4(c)(iii), where a response is lacking, relevant WHOIS information may demonstrate that Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of license, permission, or authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies “Frank Kelechi / Stone Group” as the registrant and no evidence is provided to contradict Complainant’s assertion that Respondent has never been authorized to use the BCG mark in any way. The Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
No arguments are presented in response to Complainant’s contention that Respondent has no rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (Forum Mar. 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶ 4(c)(i), even when Complainant did not argue this point); see also BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015) (“Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the <bildpl.us> domain name. Such a lack of evidence is sufficient to allow this Panel to find Respondent has no rights to such a mark.”). The failure to address Complainant’s points further support a finding that Respondent is in violation of Policy ¶ 4(c)(i).
Additionally, Complainant argues Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive and resolves to an error message. Under Policy ¶¶ 4(c)(ii) and (iv), failure to make active use of a disputed domain name indicates a respondent does not use the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). In the instant case Complainant provides screenshots showing the disputed domain name resolves to an error message. The Panel here finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered or uses the <bcgonline.us> domain name in bad faith because Respondent disrupts Complainant’s business by passing off as Complainant in emails as part of a phishing scheme. Using a disputed domain name to pass off as a complainant in emails in furtherance of a phishing scheme can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Complainant provides copies of emails in which Respondent passes off as Complainant and offers unauthorized employment opportunities to third-parties in an attempt to obtain personal information. The Panel here finds bad faith registration or use under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent registered or uses the disputed domain name in bad faith because it resolves to an inactive webpage. Failure to make active use of a disputed domain name or resolve it to an active webpage indicates bad faith under Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel again notes that Complainant provides a screenshot showing the disputed domain name resolves to an error message. The Panel here finds bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant contends Respondent had actual knowledge of Complainant’s rights in the BCG mark based on the fame of the mark and Respondent’s efforts to pass off as Complainant in emails. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and a respondent’s use of the domain to pass off as the complainant. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant asserts that the BCG mark is well-known worldwide and that Respondent must have been aware of Complainant’s rights in the mark since Respondent uses the mark to pass off as Complainant in emails. The Panel here finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bcgonline.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 19, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page