McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd.
Claim Number: FA1409001580883
Complainant is McKinsey & Company, Inc., and McKinsey Holdings, Inc. (“Complainant”), represented by Gianni P. Servodidio of Jenner & Block, New York, USA. Respondent is Privacy Protection, report abuse to / Registrar: DELTA-X Ltd. (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mckinseycorp.com>, registered with OnlineNIC, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2014; the National Arbitration Forum received payment on September 22, 2014.
On September 22, 2014, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <mckinseycorp.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 September 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2014 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@mckinseycorp.com. Also on September 26, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 made the following contentions.
i. Complainant owns the MCKINSEY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,965,376, registered Apr. 2, 1996).
ii. Complainant uses the MCKINSEY mark in connection with its business in management consulting services in a variety of different areas including finance, education and business management.
iii. Complainant operates online through <mckinsey.com>.
i. Policy ¶ 4(a)(i)
1. The <mckinseycorp.com> domain name is confusingly similar to Complainant’s MCKINSEY mark because Respondent has simply added the generic term “corp” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <mckinseycorp.com> domain name. Respondent is neither licensed nor authorized to use the MCKINSEY mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent has registered and uses the domain name in connection with a phishing scheme for personal identifiable information.
iii. Policy ¶ 4(a)(iii)
1. Respondent intentionally attempted to attract Internet users to the Respondent’s own web site for commercial gain.
2. Respondent registered and uses the disputed domain name with actual or constructive knowledge of Complainant’s rights in the mark.
3. Respondent’s phishing scheme is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant McKinsey Holdings, Inc ("MHI") is a wholly owned subsidiary of McKinsey & Company, Inc. ("McKinsey") (collectively referred to hereafter as "Complainants"). Complainants, by themselves and through their related companies, affiliates and licensees under the name McKinsey are engaged in management consulting services in a variety of different areas including finance, education and business management. Those services are provided under the marks MCKINSEY and MCKINSEY & COMPANY. MHI is the owner of the marks MCKINSEY and MCKINSEY & COMPANY in the United State and McKinsey is the owner of these marks in Germany and the Ukraine.
2. Complainant owns the MCKINSEY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,965,376, registered Apr. 2, 1996). Complainant uses the MCKINSEY mark in connection with its business.
3. Each of the Complainants has trademark rights in the MCKINSEY mark.
4. Respondent registered the disputed domain name on July 2, 2014.
5. Respondent has registered and uses the domain name in connection with a phishing scheme for personal identifiable information.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has thus made out the first of the three elements that it must establish.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely in this proceeding. Complainant uses the MCKINSEY mark in connection with its business in management consulting services in a variety of different areas including finance, education and business management. Complainant submits that it owns the MCKINSEY mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,965,376, registered Apr. 2, 1996). Complainant argues that such registrations are sufficient to establish rights in the MCKINSEY mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions, for example See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MCKINSEY trademark Complainant argues that the <mckinseycorp.com> domain name is confusingly similar to Complainant’s MCKINSEY mark because Respondent has simply added the generic term “corp” to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name that differs from a mark by only the addition of a generic term does not escape the realm of confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). As such, the Panel finds that Respondent’s <mckinseycorp.com> domain name is confusingly similar to Complainant’s MCKINSEY mark pursuant to Policy ¶ 4(a)(i).
It is now well established 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s MCKINSEY trademark and used it in its domain name, adding the word “ corp” after the trademark, implying that the domain name is an official domain name of Complainant dealing with its corporate activities and leading to an official website of Complainant dealing with the same subject;
(b) Respondent has registered and uses the domain name in connection with a phishing scheme for personal identifiable information;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information is of limited value, because Respondent used a privacy protection system when registering the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the MCKINSEY mark. The Panel also notes that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to prove that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the <mckinseycorp.com> domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name);
(e)Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent uses the disputed domain name as a part of a phishing scheme, in which it operates a job recruitment scam to obtain personally identifiable information from Internet users such as their name and driver’s license number. See Complainant’s Ex. G. Complainant has adduced evidence to support those contentions and the Panel finds that this evidence establishes the propositions made by Complainant. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name in such behavior. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel agrees that Respondent has engaged in such phishing behavior and finds that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is using the disputed domain name intentionally to divert confused Internet users to its own webpage for commercial gain. Generally, panels have found evidence of bad faith under Policy ¶ 4(b)(iv) in such behavior. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel notes how the record shows only evidence of e-mail sent from the disputed domain name—not evidence of the use of the domain name’s website. However, as the Panel’s view is that the use of the domain name creates a likelihood of confusion, it finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant asserts that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the MCKINSEY mark, due to Complainant’s extensive trademark registrations and use of the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Pane finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Thirdly, Complainant also argues that Respondent’s behavior is a type of phishing scheme. While Complainant’s assertion was conveyed solely in its Policy ¶ 4(a)(ii) section, the Panel also considers the suggestion in determining whether Respondent’s bad faith has been established. Panels have consistently held that phishing is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel recalls that Respondent uses the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name. As the Panel agrees that the circumstances demonstrate that Respondent has engaged in phishing, the Panel finds this behavior to serve as an inference of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mckinseycorp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 25, 2014
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