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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

McKinsey Holdings, Inc. v. Indidom

Case No. D2000-1616

 

1. The Parties

The Complainant: McKinsey Holdings, Inc., 555 California Street, Suite 4700, San Francisco, CA 94104, United States of America.

The Respondent: Indidom, PO Box 1, Seoul, 131-600, Korea. Administrative and billing contacts for the domain name: Zo Zo at the same address as the Respondent.

 

2. The Domain Name and Registrar

The domain name in issue is <mckinseycompany.com> (hereafter "the domain name").

The domain name was registered with Network Solutions, Inc. (hereafter "NSI"), 505 Huntmar Park Drive, Herndon, VA 20170, United States of America on September 4, 2000.

 

3. Procedural History

(1) The Complaint was filed in hardcopy on November 23, 2000, and by email on December 1, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified in accordance with the Rules, paragraph 2.a.;

- a Response to the Complaint was not filed; and that

- the Respondent was appropriately served with a Notice of Default; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is: February 5, 2001.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant

The Complainant is McKinsey Holdings, Inc., a subsidiary of McKinsey & Company. McKinsey & Company is one of the leading management consulting firms in the world, with seventy nine offices in more than forty countries. McKinsey & Company has operated business under the name McKinsey since at least as early as June 1, 1926.

The Complainant and McKinsey & Company have continuously owned and used a family of MCKINSEY marks that includes "McKinsey", "McKinsey & Company", and "McKinsey & Co" (hereafter the "McKinsey family of marks"). These marks include registrations in multiple classes, in over twenty countries, including the United States (Registrations Nos 1965376, 1966624, 1961834) and South Korea ("McKinsey" Korean Registration Number 20849 in local Class 112; "McKinsey & Co" Korean Registration Number 34962 in local Class 112).

B. The Respondent

No Response was filed and so no further information than the information from the Verification response by NSI on December 6, 2000 is known about the Respondent.

 

5. Parties’ Contentions

A. The Complainant’s assertions

The Respondent's domain name is identical to the McKinsey family of marks.

The Respondent has no legitimate interest or rights in the domain name. The Complainant asserts:

(1) The web site at issue is not in use and points to the Registrar’s web site. This is not evidence of use in good faith.

(2) The "McKinsey" trademark is registered in both the United States and South Korea. Under the laws of the United States, registration of a trademark provides constructive notice of the registrant’s trademark rights.

(3) Respondent’s bad faith should also be presumed from the fame of "McKinsey" and "McKinsey & Company".

(4) Even if Respondent was not aware of Complainant or Complainant’s parent company, a reasonable amount of research would have disclosed McKinsey’s domain name, <www.mckinsey.com>, its web site at this address, and its registrations for the "McKinsey" trademark in both the United States and South Korea.

(5) It is highly unlikely that Respondent could legitimately use each of the more than 50 domain names it owns in providing goods and services in commerce.

The Respondent registered the domain name and is using it in bad faith. The Complainant asserts:

(1) In an email dated September 14, 2000 the Respondent offered to sell the domain name to the Complainant for an amount (USD5000) far in excess of any out-of-pocket costs directly related to the domain name; and

(2) The Respondent has registered more than 50 domain names. As such, the Respondent has engaged in a pattern of conduct in registering other domain names of other well-known marks. Its registration of the domain name prevents the Complainant from reflecting its trademark, service mark and trade name in a corresponding domain name.

Accordingly the Panel should order that <mckinseycompany.com> be transferred to the Complainant.

B. The Respondent’s assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar.

There are two requirements that the Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar.

The Complainant has clearly established the first requirement of this paragraph. It has a large number of trade marks, for the word marks "McKinsey", "McKinsey & Company", and "McKinsey & Co". These marks are registered in numerous classes and countries; most pertinent to this decision both "McKinsey" and "McKinsey & Company" (or its variant "McKinsey & Co") have been registered in the countries of the Complainant (United States of America) and the Respondent (South Korea). The first requirement of this paragraph is therefore made out.

The second requirement is that the domain name be identical or confusingly similar to the registered marks. The Complainant asserts that the domain name is identical to its "McKinsey" and "McKinsey & Company" marks. It provides no substantive argument why this might be so, but it does cite two earlier UDRP determinations, Stella D’Oro Biscuit Co. v. The Patron Group, Inc., WIPO case no. D2000-00012 and Gateway, Inc. v. Pixelera.com, Inc., WIPO case no. D2000-0109. In the first case, the mark in issue was "Stella D’Oro" and the domain name in question was <stelladoro.com>, and in the latter case the mark was "Gateway" and the domain name was <gate-way.com>.

What the Complainant seems to be pleading is the proposition that the absence of punctuation in domain names is a consequence of the technical limitations of the system, and generally does not affect the nature of the similarity and confusion between a registered mark (with punctuation) and the corresponding domain name (without punctuation). This proposition has been upheld in many cases. Examples include all of the cases where the punctuation concerned was spaces, beginning with the first ever WIPO decision, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO case no. D99-0001 (mark "World Wrestling Federation" rendered as <worldwrestlingfederation.com>), and in many subsequent decisions where spaces were not rendered in domain names. Equally, other forms of punctuation have not altered the proposition, including apostrophes (Stella D’Oro Biscuit Co. v. The Patron Group, Inc., WIPO case no. D2000-00012 (mark "Stella D’Oro" rendered as <stelladoro.com>); Parfums Christian Dior S.A. v. Jadore, WIPO case no. D2000-0938 (mark "J’Adore" rendered as <jadore.com>)), periods or stops (J.P. Morgan v. Resource Marketing, WIPO case no. D2000-0035 (mark "J.P.Morgan" rendered as <jpmorgan.org>)), hyphens (Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO case no. D2000-0150 (mark "Wal-Mart" included in <walmartcanada.com>); Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO case no. D2000-0477 (mark "Wal-Mart" included in <walmartcanadasucks.com>, <walmartuksucks.com>, <walmartpuertorico.com> and <walmartpuertoricosucks.com>)), ampersands (TPI Holdings, Inc. v. Jason Guida, WIPO case no. D2000-0269 (mark "Boat & RV Trader" rendered as <boatrvtrader.com>)), and diacritical marks (Uniуn Elйctrica Fenosa v. Javier Hidalgo Romero, WIPO case no. D2000-0892 (mark "Uniуn Elйctrica Fenosa " rendered as <unionfenosa.com>); Uniуn Elйctrica Fenosa v. Sydey Hussain, WIPO case no. D2000-0893 (mark "Uniуn Elйctrica Fenosa " rendered as <unionfenosa.net>)).

Though this proposition will not always apply, and there may be occasions where the absence of punctuation might alter the sense of the domain name, I find that in this case the removal of the ampersand from "McKinsey & Company" does not affect the user’s understanding of the domain name. The domain name <mckinseycompany.com> is either identical or confusingly similar to the mark "McKinsey & Company".

Further -- though it is unnecessary to keep looking for additional bases of decision -- clearly the domain name is confusingly similar to the "McKinsey" marks, since the addition of "company" is a generic descriptor of corporate status and does not alter the meaning of the domain name (see Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO case no. D2000-1117).

The Complainant has therefore shown that it has rights in trade marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point:

(1) The web site at issue is not in use and points to the Registrar’s web site. This is not evidence of use in good faith.

(2) The "McKinsey" trademark is registered in both the United States and South Korea. Under the laws of the United States, registration of a trademark provides constructive notice of the registrant’s trademark rights.

(3) Respondent’s bad faith should also be presumed from the fame of "McKinsey" and "McKinsey & Company".

(4) Even if Respondent was not aware of Complainant or Complainant’s parent company, a reasonable amount of research would have disclosed McKinsey’s domain name, <www.mckinsey.com>, its web site at this address, and its registrations for the "McKinsey" trademark in both the United States and South Korea.

(5) It is highly unlikely that Respondent could legitimately use each of the more than 50 domain names it owns in providing goods and services in commerce.

The Complainant has misconceived the nature of the issue in Paragraph 4.a.(ii). This paragraph asks whether the Respondent has any legitimate interest or rights in the domain name, not whether there was bad faith dealing in the domain name. With the possible exception of argument (1), all of the Complainant’s arguments are more properly considered as arguments which relate to bad faith; an issue which is dealt with in Paragraph 4.a.(iii) of the UDRP. Although there is a relationship between the requirements for Paragraphs 4.a.(ii) and (iii), they are nonetheless distinct issues that must be assessed separately. I shall therefore consider these arguments of the Complainant in the sub-section below which deals with the bad faith-criterion.

In previous decisions, the Panels confront a difficulty where the Respondent fails to file a Response, especially in respect of Paragraph 4.a.(ii). Though the Complainant bears the formal burden of proof to establish all the elements of Paragraph 4.a, there is some onus on the Respondent to establish a positive defence of its legitimate interest. In situations such as this, in order to protect the Respondent’s interests it is necessary to consider whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides examples of how a Respondent might establish its legitimate interest or rights in a domain name. Though it is not intended to be exhaustive, it is useful to see whether any of the examples provided in that paragraph might apply here.

Paragraph 4.c. of the UDRP provides the following examples which give rise to rights or a legitimate interest to a Respondent:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As to Paragraph 4.c.(i), there is no evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent has "parked" the name at a temporary site that has been established by its registrar. This is a common service provided by registrars, and is not evidence of the kind of bona fide use contemplated by Paragraph 4.c.(i). (See Hamlet Group v. Lansford, WIPO case no. D2000-0073; Mediasite S.A.R.L. v. Intellisolve Ltd., WIPO case no. D2000-0179).

Paragraph 4.c.(ii) provides that legitimate interests or rights may be demonstrated by the Respondent if it has been commonly known by the domain name, even without trade or service mark rights. There is no evidence that this is applicable here. The Respondent’s name is "Indidom" and the administrative and billing contact is "Zo Zo". Neither name provides any indication that the names of the registrant and contact might somehow involve "McKinsey". Paragraph 4.c.(ii) does not apply.

Finally, there is the question of whether Paragraph 4.c.(iii) might assist the Respondent. However, the parking of a domain name with a registrar is not on its own sufficient to constitute legitimate non-commercial or fair use of the domain name within the meaning of Paragraph 4.c.(iii).

Hence, the Respondent has no rights or legitimate interest in the domain name. The Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

Paragraph 4.b. of the UDRP provides for a number of examples which will satisfy the bad faith requirements of Paragraph 4.a.(iii), and one of these situations is present here.

In an email dated September 14, 2000 the Respondent offered to sell the domain name to the Complainant for USD5000. Paragraph 4.b.(i) of the UDRP provides that the following shall be evidence of the registration and use of a domain name in bad faith:

"circumstances indicating that … [the registrant has] registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of …[the registrant’s] documented out-of-pocket costs directly related to the domain name"

Clearly the amount of USD5000 is far in excess of any out-of-pocket costs directly related to the domain name. On the basis of Paragraph 4.b.(i), bad faith registration and use is established.

The Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <mckinseycompany.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: January 31, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1616.html

 

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