Experian Information Solutions, Inc. / Consumerinfo.Com, Inc. / Experian Technology Limited v. Timothy Jones / Expert Media / Domain Administrator / Eastern Valley Limited
Claim Number: FA1803001778739
Complainant is Experian Information Solutions, Inc., Consumerinfo.Com, Inc. and Experian Technology Limited (“Complainants”), represented by Laura M Konkel of Michael Best & Friedrich LLP, Illinois, United States of America. Respondents are Timothy Jones / Expert Media / Domain Administrator / Eastern Valley Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <experian2017.com>, <experiancredit2017.com>, <experiandarkweb.com>, <experianidwork.com>, and <experianscan.com>, registered with GoDaddy.com, LLC; and <experianldworks.com> and <experianaidworks.com>, registered with Site Matrix 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.
Charles A. Kuechenmeister.
Complainants submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.
On March 28, 2018 and April 2, 2018 respectively, GoDaddy.com, LLC and Site Matrix LLC confirmed by e-mail to the Forum that the <experian2017.com>, <experiancredit2017.com>, <experiandarkweb.com>, <experianidwork.com>, <experianldworks.com>, <experianscan.com>, and <experianaidworks.com> domain names are registered with GoDaddy.com, LLC or Site Matrix LLC, and that Respondents are the current registrants of the names. GoDaddy.com, LLC and Site Matrix LLC have verified that Respondents are bound by the respective GoDaddy.com, LLC and Site Matrix LLC registration agreements and have 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 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 24, 2018 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@experian2017.com, postmaster@experiancredit2017.com, postmaster@experiandarkweb.com, postmaster@experianidwork.com, postmaster@experianldworks.com, postmaster@experianscan.com, postmaster@experianaidworks.com. Also on April 4, 2018, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2018, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 Respondents.
Complainants request that the domain names be transferred from Respondents to Complainants.
A. Complainants
Complainants are part of a leading global information services company (Experian plc) that since 1996 has provided services under the EXPERIAN mark that help people and businesses manage credit risk, prevent fraud, check credit reports, and protect against identify theft. Complainants have rights in the EXPERIAN mark through their registration of that mark with the United States Patent and Trademark Office (“USPTO”). (Reg. No. 2,260,187) on July 13, 1997, and their USPTO registration of the EXPERIAN IDENTITYWORKS mark (Reg. No. 5,341,440) on November 21, 2017. Respondents’ <experian2017.com>, <experiancredit2017.com>, <experiandarkweb.com>, <experianidwork.com>, <experianldworks.com>, <experianscan.com>, and <experianaidworks.com> domain names (the “Domain Names”) are confusingly similar to Complainants’ EXPERIAN mark as they incorporate the EXPERIAN mark verbatim, only adding generic and/or descriptive terms (“credit,” “2017,” “darkweb,” “scan”), abbreviating Complainants’ IDENTITYWORKS mark to “idwork(s),” and adding the “.com” generic top level domains (“gTLDs”).
Respondents have no rights or legitimate interests in the Domain Names. Complainants have not authorized or licensed Respondents to use their EXPERIAN or EXPERIAN IDENTITYWORKS marks, and Respondents are not commonly known by the Domain Names. Additionally, Respondents do not use the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, they offer links to services that compete with Complainants’ services.
Respondents registered and are using the Domain Names in bad faith. Respondents use the Domain Names to host web sites containing links to services that compete with Complainants’ services, presumably for click-through fees. Respondents had actual knowledge of Complainants’ rights in the EXPERIAN and EXPERIAN IDENTITYWORKS marks at the time of registration. Finally, Respondents are serial cybersquatters, having engaged in a pattern of registering domain names and this has been found to constitute bad faith under Policy ¶ 4(b)(ii).
B. Respondents
The Respondents did not file a Response.
Preliminary Issue: Multiple Respondents, Multiple Domains
Complainants argue that consolidation of these Respondents and all seven Domain Names is appropriate because circumstances indicate that common control is exercised over all of them or the web sites to which they resolve. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The WHOIS records submitted as Exhibits B through H inclusive to the Amended Complaint show that all seven Domain Names are owned by two registrants located in Hong Kong who share the same email address (info@chinacapitalcom) and phone number (6156287491). Additionally, the web sites resolving from them, as shown on Amended Complaint Exhibits P through V inclusive, share common characteristics, such as the services for which links are provided, the general format and page lay-out, and the font and color of print appearing on the pages. On this evidence the Panel finds all seven Domain Names are subject to common control, and will proceed as to all of them.
Merits of the Case
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:
(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 Respondents’ failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel will decide this administrative proceeding on the basis of Complainants’ undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Names.
Complainants have registered their EXPERIAN and EXPERIAN IDENTITYWORKS marks with the USPTO, EXPERIAN (Reg. No. 2,260,187) on July 13, 1997, and EXPERIAN IDENTITYWORKS (Reg. No. 5,341,440) on November 21, 2017. See, Amended Complaint Ex. J. Those registrations are sufficient to demonstrate their rights in those marks for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainants’ registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainants have sufficiently demonstrated their rights in the EXPERIAN and EXPERIAN IDENTITYWORKS mark for the purposes of Policy ¶ 4(a)(i).
Respondents’ Domain Names are confusingly similar to Complainants’ marks. They incorporate Complainants’ marks verbatim, and merely add generic and/or descriptive terms, abbreviate Complainants’ EXPERIAN IDENTITYWORKS mark to “experianidwork(s),” and append gTLDs to those marks. These changes are not sufficient to distinguish them from Complainants’ marks for the purposes of Policy ¶ 4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainants’ entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy), Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the EXPERIAN and EXPERIAN IDENTITYWORKS marks, in which Complainants have substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(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 or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainants asserts that Respondents have no rights or legitimate interests in the Domain Names because (i) Respondents are not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web sites resolving from them simply redirect visitors to other web sites, presumably for pay-per click revenues, and this cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Names, (ii) Complainants have not licensed or authorized Respondents to use any of their marks for any purpose whatever, and (iii) Respondents are not commonly known by any of the Domain Names. These allegations are supported by competent evidence. According to the WHOIS information submitted as Amended Complaint Exhibits B through H inclusive, the first five Domain Names listed are registered to “Timothy Jones,” Registrant Organization “Expert Media,” and the last two are registered to “Domain Administrator,” Registrant Organization “Eastern Valley Limited.” None of these names bears any resemblance to the Domain Names, and there is no evidence before the Panel suggesting that Respondents are commonly known by any of the Domain Names or any variation of them. Further, Complainants state that they have never authorized any Respondent to use either their EXPERIAN or EXPERIAN IDENTITYWORKS mark. Complainants have specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, all Domain Names resolve to web sites that contain links to services that compete directly with services offered by Complainants, such as protection from identity theft, protection of credit, information about credit reporting, credit scores and the dark web, and the like. See, Amended Complaint Exhibits P through V inclusive. Respondents’ web sites are classic pay-per-click pages displaying links which divert visitors—likely Complainants’ customers and potential customers—to other web sites which are not associated with Complainants and, in some instances, are owned by their competitors. UDRP Panels have found that leading consumers who are searching for a particular business to a site where the same or similar services provided by others are listed, is not a bona fide offering of goods and services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). Health Level Seven International, Inc. v. McCarragher, Claim No. FA 1723981 (Forum, 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”), Homer, TLC Inc. v. Lorna Kang, Claim No. FA573872 (Forum, 2005) (“Respondent’s use of a domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”), CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondents’ use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of those domains. Respondents are clearly using them to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its web sites within the meaning to Policy ¶ 4(b)(iv). Respondents are obtaining commercial gain from their use of the Domain Names and the resolving web sites. When a visitor to these web sites clicks on one of the links which appear there, Respondents receive compensation from the various website owners who are forwarded from the site. Most likely, Respondents receive compensation based upon the number of hits the web site owners get from being linked to its web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
Here, Respondents use the Domain Names to generate click-through fees from pay-per-click links on the resolving web sites and this alone constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondents’ use of the Domain Names and their web sites results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondents here for themselves and the various website owners who are forwarded from the links at the Domain Names. There is no other rational explanation for Respondent having registered and maintained the Domain Names and resolving them to pay-per-click sites with commercial links that relate directly to Complainants’ line of business. Respondents’ use of the Domain Names is commercial because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a domain name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”), American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”), Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Further, the mark EXPERIAN is neither descriptive nor generic. It is fanciful and inherently distinctive, and is not a term that would normally occur to a person to use unless that person desired to mimic or copy Complainants. Given Complainants’ fame and their long-standing use of that mark to market their services, and the fact that Respondents incorporated it so clearly into their Domain Names is compelling evidence that they knew of Complainants’ marks when they registered the Domain Names. Indeed, it is evident that Respondents registered them precisely because they do contain Complainants’ mark and would likely attract Internet traffic to their sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondents clearly knew of Complainant and its mark when they registered the Domain Names.
Respondents’ Domain Names were registered between April 6 and September 19, 2017. See, Amended Complaint Exhibits B through H inclusive. Complainants’ USPTO registration date for the EXPERIAN IDENTITYWORKS mark is November 21, 2017, which is later than the registration date of all of the Domain Names. UDRP panels have consistently held that registration of a domain name before the complainant acquires rights in its trademark precludes a finding of bad faith registration of the domain name. Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (a respondent cannot be found to have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). At the same time, however, a complainant’s rights in a USPTO registration extend back to the date of filing for the mark. CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1 1589962 (Forum Jan. 1, 2015) (“The Panel finds that Complainant’s valid registration with the USPTO demonstrates Complainant’s rights in the CHEAPCARIBBEAN.COM mark, and that such rights extend back to the Feb. 7, 2007 filing date.”). Complainants’ filing date for the EXPERIAN IDENTITYWORKS mark was February 29, 2016 (See, Amended Complaint Ex. J), which predates Respondents’ registrations of the Domain Names. The evidence of bad faith registration based upon Respondents’ pay-per-click scheme and their prior knowledge of Complainants’ rights in the EXPERIAN IDENTITYWORKS mark is not vitiated or overcome in any way by the fact that Complainants’ registration of that mark was issued by the USPTO after the registration of the <experianidwork.com> and <experianldworks.com> Domain Names. Complainants’ rights in that mark still predate Respondents’ registration of the Domain Names for the purposes of Policy ¶ 4(a)(iii).
For the reasons set forth above, the Panel finds that Respondents registered and are using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <experian2017.com>, <experiancredit2017.com>, <experiandarkweb.com>, <experianidwork.com>, <experianldworks.com>, <experianscan.com>, and <experianaidworks.com> Domain Names be TRANSFERRED from Respondents to Complainants.
Charles A. Kuechenmeister, Panelist
Dated: April 30, 2018
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