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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McKinsey & Company, Inc. and McKinsey Holdings, Inc. v Jerome Zimmermann
Case No. D 2001-0009
1. The Parties
The Complainants are McKinsey & Company, Inc., 55 East 52nd Street, New York, New York 10022, USA. and McKinsey Holdings, Inc., 555 California Street, Suite 4700, San Francisco, California 94104, USA.
The Respondent is Jerome Zimmermann, 26 Scheepers Street, North Riding, Gauteng 2194, South Africa.
2. The Domain Names and Registrar
The Domain Names are <mckinseyglobalinstitute.com>, <mckinsey-global-institute.com>, <themckinseyglobalinstitute.com>, and <the-mckinsey-global-institute.com>.
The Registrar is Registrars.com.
3. Procedural History
The Complaint was received by WIPO by email on January 4, 2001 and in hardcopy form on January 5, 2001. On January 22, 2001 WIPO requested an amendment to the jurisdiction paragraph. The amendment was received by email on January 23, 2001 and in hard copy on February 6, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <mckinseyglobalinstitute.com>, <mckinsey-global-institute.com>, <themckinseyglobalinstitute.com> and <the-mckinsey-global-institute.com> ("the Domain Names") were registered through Registrars.com and that Jerome Zimmermann is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On February 7, 2001 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was February 26, 2001. WIPO issued to the Respondent a Default Notice on February 28, 2001. No Response was received.
The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is March 26, 2001.
4. Factual Background
The following matters are set out in the Complaint. They are supported by evidence appended to the Complaint and the Respondent has not disputed them. Indeed, for the most part they are indisputable. The Panel has no reason to doubt that they are accurate and treats them as fact.
The Complainant is a world famous management consultancy firm which has traded under the name McKinsey since at least as early as 1926.
The Complainant is the proprietor of trade mark registrations in the United States, South Africa and elsewhere for the word MCKINSEY.
In 1990 the Complainant established the McKinsey Global Institute, which is an independent research group within the Complainant. Its primary purpose is to undertake original research and develop substantive points of view on the critical economic issues facing the Complainant’s clients around the world. The McKinsey Global Institute is funded by the Complainant. The McKinsey Global Institute produces reports which are published in the Complainant’s journal McKinsey Quarterly.
Over the past 10 years the Complainant has invested approximately US$35 million promoting the McKinsey Global Institute.
By virtue of the work of the McKinsey Global Institute and the investment in promoting it, the Complainant’s goodwill in and connected with the McKinsey Global Institute (including the goodwill associated with it in South Africa) is substantial. The Complainant has common law rights in and/or associated with the name McKinsey Global Institute.
On December 23, 1999, the Respondent registered the Domain Names. The Respondent (with an address in South Africa) has no licence from the Complainant to use the name McKinsey Global Institute.
On March 31, 2000 the Complainant sent an email to the Respondent requesting transfer of the Domain Names.
On March 31, 2000 the Respondent responded: "I take it that you want to take ownership of these domains. Make me an offer."
On August 1, 2000 the Complainant sent a further email to the Respondent drawing the Respondent’s attention to the Complainant’s rights and offering in return for transfer of the Domain Names reimbursement of the Respondent’s registration expenses. The Complainant received no reply to that email.
5. Parties’ Contentions
The Complainant relies upon the above factual background and contends, inter alia, that the three elements of paragraph 4(a) of the Policy are made out.
The Complainant contends that the Domain Names are identical or are confusingly similar to a trade mark or service mark in which the Complainant has rights namely the mark MCKINSEY GLOBAL INSTITUTE.
The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Names. The Complainant points to the fact that the name MCKINSEY GLOBAL INSTITUTE is a famous name indicating exclusively the research unit of that name within the Complainant. The Complainant has granted no licence to the Respondent to use the name MCKINSEY GLOBAL INSTITUTE and the Complainant knows of no reason why the Respondent could claim any rights or legitimate interests in respect of the Domain Names.
The Complainant further contends that in registering the Domain Names the Respondent must have known of the Complainant and the reputation and goodwill of the McKinsey Global Institute. The Complainant points to the Respondent’s response to the Complainant’s opening email and it points also to the fact that it received no response to its offer to reimburse the Respondent his registration expenses. The Complainant invites the Panel to draw the inference that the Complainant expected and anticipated an offer for the Domain Names for a price in excess of the Respondent’s out of pocket expenses.
The Complainant contends that the evidence supports the proposition that in line with paragraph 4(b)(i) of the Policy the Respondent registered the Domain Names in bad faith and is using them in bad faith.
The Complainant requests that the Domain Names be transferred to the Complainant.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The contentions of the Complainant are amply supported by the evidence annexed to the Complaint. The Panel infers from the behaviour of the Respondent in his correspondence with the Complainant and from the fact that he has not responded to the Complaint that he knows that he has no answer to the Complaint.
Identical or confusing similarity
The Panel finds that all four Domain Names are identical or substantially identical and certainly confusingly similar to the mark McKinsey Global Institute, a trade mark or service mark by reference to which the Complainant conducts business and in and around which the Complainant has substantial goodwill.
Rights or legitimate interest of the Respondent
The Panel has no hesitation in adopting the contentions of the Complainant in this regard and the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent had an opportunity to demonstrate such rights or legitimate interests in respect of the Domain Names along the lines of paragraph 4(c) of the Policy but did not do so.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Again, the Panel accepts the contentions of the Complainant. The Domain Names are clearly intended to refer to the Complainant and its McKinsey Global Institute, the Respondent has no rights or legitimate interest in respect of the Domain Names and the Panel infers from the Respondent’s behaviour in the email exchanges that the Respondent (who it is to be noted has made no active use of any of the Domain Names) registered them in the hope and expectation that he would be able to sell them to the Complainant for a sum of money in excess of his out of pocket expenses.
The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith.
In the result, the Panel having found that the Domain Names are identical and/or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered in bad faith and are being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Names be transferred to the Complainant.
Dated: March 22, 2001