Experian Information Solutions, Inc. / Experian Technology Limited v. Power Click
Claim Number: FA2006001900454
Complainant is Experian Information Solutions, Inc. & Experian Technology Limited (“Complainant”), represented by Jeffrey H. Brown of Michael Best & Friedrich LLP, United States. Respondent is Power Click (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <experiean.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 known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020.
On June 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <experiean.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 June 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2020 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@experiean.com. Also on June 18, 2020, 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 July 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in EXPERIAN. Complainant holds numerous registrations for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a global information company which provides its services by reference to the trademark EXPERIAN;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 2,263,923, registered July 27, 1999, for the trademark, EXPERIAN;
3. the disputed domain name was registered on September 16, 2002 and periodically redirects Internet users to Complainant’s website; and
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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."
There are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complaint states that the named complainants:
“… are part of the Experian group of companies, the ultimate parent of which is Experian plc. Complainants owns trademark rights in numerous EXPERIAN trademarks and, accordingly, have an interest in the disputed Domain Name and this Complaint. It has been determined that consolidation of Experian companies as Complainants ‘is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue.’ (Experian Limited, Experian Information Solutions, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Aleksandr Osipov, Private, Case No. D2017‐2009 (WIPO Dec. 7, 2017)).”
Absent any challenge from Respondent or any other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant” (see, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006)).
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark EXPERIAN with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by an obvious and seemingly deliberate typographical alteration. The alteration is of no distinctive value in terms of the overall impact of the compared terms – aurally and visually they are virtually identical. The Panel finds the domain name confusingly similar to the trademark (see, for example, Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) holding that “The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
In consequence of these administrative proceedings the Registrar disclosed the name of the domain name registrant as “POWER CLICK”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. Complainant states that there is no association between the parties. The domain name periodically redirects Internet users to Complainant’s own website site which does nothing to establish either rights or a legitimate interest in the domain name. The Panel clearly finds that there is no use of the domain name in respect of a bona fide offering of goods or services or evidence of a legitimate noncommercial or fair use (see, for example, Direct Line Ins. plc v. Low‐cost‐domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”); Altavista Co. v. Brunosousa, D2002‐0109 (WIPO Apr. 3, 2002) holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged that onus and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) 'circumstances indicating that the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
On the evidence, the application of any of those four scenarios is less apt than the direct findings, as separate matters, of registration in bad faith and use in bad faith.
The Panel has already found the disputed domain name to be confusingly similar to the trademark. There is no apparent reason for Respondent to register the name in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning. In the absence of another explanation, the Panel finds that it is more likely than not that Respondent targeted Complainant trademark and business at the time of registration albeit that registration took place almost twenty years ago, an issue which Complainant is keen to ignore. On balance, the Panel finds registration in bad faith.
Further, there has been no meaningful use of the domain name. To the extent that it has periodically redirected to Complainant’s website then that use is in bad faith (see Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also
Direct Line Ins. plc v. Low‐cost‐domain, FA 1337658, cited above). If, on the other hand, a view is taken that there has been no sensible use of the domain name over almost two decades, then the Panel finds bad faith use in terms of the Policy by reason of the principle of “passive holding” first enunciated in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that the reasoning set out in that case applies with equal force here.
Accordingly, the Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <experiean.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 14, 2020
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