BCG.Top URS Decision is Surprising

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I don’t typically report on Uniform Rapid Suspension (URS) decisions. I also don’t typically report on disputes involving the new gTLD domain names unless there is something very compelling. The URS decision involving the BCG.Top domain name is an exception. The panelist ruled in favor of Boston Consulting Group, which has a trademark for “BCG.”

Here is why the URS was created for new gTLD domain names, courtesy of the ICANN website:

The Uniform Rapid Suspension System is a rights protection mechanism that complements the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.

You will notice it says “clear-cut cases of infringement.” In my opinion, some examples of clear cut infringement could be Verizon.shop, Volvo.site, or Facebook.loans. These are all clearly famous brand names, and it seems pretty clear-cut that these domain names can not be registered to a third party without permission (perhaps unless they are being used for some sort of first amendment exercise, but even that could be far-fetched).

When I think of the acronym BCG, nothing really comes to the top of my mind. I have definitely heard of Boston Consulting Group, but I didn’t know the company is commonly referred to as that. The company filed a URS against the BCG.Top domain name, and it won. The domain registrant, who is based in China, did not respond to the proceeding.

Part three of the decision is particularly perplexing to me:

“3. The Examiner finds that the disputed domain name was registered and is being used in bad faith. The disputed domain name reverts to a site which informs the user that “This site can’t be located.” Such passive use of the domain name in dispute supports a finding of the requisite bad faith. Given the longstanding worldwide use by Complainant of the BCG mark, it may also be assumed that the domain name was registered in bad faith.”

I don’t agree that passive use of a domain name is bad faith. What if the registrant was in the process of creating a website or recently took down a website?

From my (non-legal) perspective, I don’t see how Boston Consulting Group won this URS. It’s not clear-cut, to me anyway, that the domain name is infringing. If it had advertising for competitors – or possibly advertising at all, a Boston Consulting Group or competitor’s logo, a form or sign in page that could be confusing to visitors (for instance if phishing emails were sent directing people there), or something else beyond passive use, I might understand more. It doesn’t seem like any of that happened.

I understand that Boston Consulting Group has a trademark for BCG, but I still don’t see how this is a clear-cut case of infringement, which is the purpose of the URS.

6 COMMENTS

  1. Thanks for reporting this. Yes Elliot, it is definitely a clear cut case. Clear cut case of a beyond ludicrously wrong unjust decision and it’s time to sue if one were inclined. What if it had been BCG.com? Wow…

  2. Hmm, it put my comment in moderation Elliot, but unlike last time this time can’t why it would have. Oh well, I’m sure you’ll get to it…

  3. Yeah, while Boston Consulting Group may be the most well known company using the initials BCG, it certainly isn’t the only company in the world to do so. No particular reason why an individual in China would have heard of them, or would be registering a three-letter domain to target them.

    Passive holding of a three-letter domain fails the much lower “balance of probabilities” threshold for evidence required in a UDRP, and certainly doesn’t meet the clear and convincing standard for the URS.

    The standard often applied by URS examiners to reach the “clear and convincing” threshold is to require clearly infringing use. Yet there was no use here. The examiner relied on his personal assumptions, not on any evidence.

    Many skeptics didn’t expect the “clear and convincing” standard to mean anything after a while given many panelists’ tendencies to water down the standards when given a chance. Didn’t take long…

  4. To me, it is more like that the registrant didn’t respond to the proceeding so the panelist simply said whatever he thought could rationalize his judgment.

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