The Boston Consulting Group v. George Bene
Claim Number: FA1804001782836
Complainant is The Boston Consulting Group (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is George Bene (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonconsultinggroupjobs.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2018; the Forum received payment on April 20, 2018.
On April 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bostonconsultinggroupjobs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@bostonconsultinggroupjobs.com. Also on April 23, 2018, 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 May 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the name and mark THE BOSTON CONSULTING GROUP, is a world-renowned business management consulting firm, with offices in 50 countries and 14,000 employees.
Complainant holds a registration for the mark THE BOSTON CONSULTING GROUP, which is on file with the States Patent and Trademark Office (“USPTO”) as Registry No. 1,934,896, registered November 14, 1995, most recently renewed as of August 15, 2015.
Respondent registered the domain name <bostonconsultinggroupjobs.com> on March 14, 2018.
The domain name is confusingly similar to Complainant’s THE BOSTON CONSULTING GROUP mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the THE BOSTON CONSULTING GROUP mark in any manner.
Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, the domain name resolves to an inactive webpage, and is used only to host an email address from which it sends fraudulent e-mails which impersonate an executive of Complainant in order to defraud unsuspecting Internet users.
Those e-mails request various pieces of information from recipients, including their credit card numbers, all as a ruse for arranging visits to the city of Boston for purported in-person employment interviews.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the mark THE BOSTON CONSULTING GROUP at the time Respondent registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the service mark THE BOSTON CONSULTING GROUP by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bostonconsultinggroupjobs.com> domain name is confusingly similar to Complainant’s THE BOSTON CONSULTING GROUP service mark. The domain name contains the mark in its entirety, less only the spaces between its terms and the definite article “THE,” but with the addition of the generic term “jobs,” which relates to an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum August 10, 2016) (finding that adding the words “powder coating” to the mark of a UDRP complainant to form the domain name <yetipowdercoating.com> was “merely explicative and directly refer[s] to some of the services rendered by the Complainant” and, therefore, created an “irrefutable confusing similarity” to that complainant’s YETI mark).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that affixing a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Further see The Men’s Wearhouse, Inc. v. BLADMIR BOYIKO, FA 1654753 (Forum February 3, 2016) (finding that removing the definite article “the” from a UDRP complainant’s mark in forming a domain name did not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <bostonconsultinggroupjobs.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain name, <bostonconsultinggroupjobs.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the mark THE BOSTON CONSULTING GROUP for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “George Bene,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent makes no active use of the <bostonconsultinggroupjobs.com> domain name except for its employment in an e-mail address used to facilitate an e-mail scam aimed at unsuspecting Internet users. Such use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Microsoft Corporation v. Terrence Green, FA 1661030 (Forum April 4, 2016) (finding a respondent’s use of disputed domain names to send fraudulent emails purportedly from agents of a UDRP complainant to be neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <bostonconsultinggroupjobs.com> domain name to conduct an online fraud scheme, commonly called “phishing,” in hopes of obtaining the personal information of unsuspecting internet users. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Microsoft Corporation v. Terrence Green, FA 1661030 (Forum April 4, 2016) (finding that evidence of a respondent’s use of disputed domain names to send fraudulent emails to Internet users supported a finding of bad faith registration and use of those domain names under Policy ¶ 4(b)(iii)). See also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that a respondent’s us of a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in a phishing scheme was evidence of bad faith registration and use).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the THE BOSTON CONSULTING GROUP mark when Respondent registered the <bostonconsultinggroupjobs.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s mark, and therefore bad faith registration of a challenged domain name that was confusingly similar to that mark] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bostonconsultinggroupjobs.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 18, 2018
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