Experian Information Solutions, Inc. v.
Claim Number: FA1004001320517
Complainant is Experian Information Solutions, Inc. (“Complainant”), represented by Jeffrey
H. Brown, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <experianconsumer.com>, registered with Moniker.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2010.
On April 27, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <experianconsumer.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2010 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@experianconsumer.com by e-mail. Also on April 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <experianconsumer.com> domain name is confusingly similar to Complainant’s EXPERIAN mark.
2. Respondent does not have any rights or legitimate interests in the <experianconsumer.com> domain name.
3. Respondent registered and used the <experianconsumer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Experian Information Solutions, Inc., provides businesses and consumers tools to prevent fraud, credit risk and identity theft. Complainant employs approximately 15,000 individuals in forty countries with revenue exceeding $3.9 billion annually. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its EXPERIAN mark (e.g., Reg. No. 2,260,187 issued July 13, 1999).
Respondent, Chad Moston, registered the <experianconsumer.com> domain name on March 18, 2008. Respondent’s disputed domain name resolves to a website that contains a search feature, “related search terms” section with third-party links to consumer loan and credit service companies in competition with Complainant, and a “popular categories” section that displays third-party links to websites unrelated to Complainant.
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."
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(e), 14(a) and 15(a) of the Rules 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 (Nat. Arb. 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.”).
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.
Previous panels have decided that a complainant can establish rights in its mark under Policy ¶ 4(a)(i) by registering its mark with a governmental trademark authority. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). This Panel finds that Complainant has established rights in its EXPERIAN mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,260,187 issued July 13, 1999).
Complainant argues that Respondent’s <experianconsumer.com> domain name is
confusingly similar to Complainant’s EXPERIAN mark. Complainant contends that: (1) Respondent’s
disputed domain name contains Complainant’s mark in its entirety; (2) adds the
generic term “consumer;” (3) adds the generic top-level domain (“gTLD”) “.com;”
(4) that these additions are not sufficient to distinguish the disputed domain
name from Complainant’s mark. The Panel
finds that Respondent’s <experianconsumer.com>
domain name is confusingly similar to Complainant’s EXPERIAN mark under Policy
¶ 4(a)(i), where the disputed domain name contains Complainant’s mark in its
entirety while adding the generic term “consumer” and the gTLD “.com.” See
Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it holds rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
The WHOIS information for the <experianconsumer.com> domain name identifies “Chad Moston”
as the registrant of the domain name.
Complainant contends that Respondent has not been given permission to
use Complainant’s mark and that Respondent is not commonly known by the <experianconsumer.com> domain
name. Absent evidence from Respondent
indicating that it is commonly known by the disputed domain name, the Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii) because the WHOIS information, and other evidence on record,
does not show that Respondent is commonly known by the disputed domain
name. See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant argues that Respondent is not using the <experianconsumer.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s use of the <experianconsumer.com> domain name to display various competing and unrelated third-party links to Complainant’s business is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. Complainant further contends that Respondent receives click-through fees associated with the third-party links displayed on its website. The Panel finds that Respondent’s use of the disputed domain name to display third-party links to Complainant’s competitors and to businesses unrelated to Complainant, presumably for financial gain, is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the disputed domain name to maintain a directory website that features third-party links to Complainant’s competitors results in a disruption of business for Complainant. Complainant contends that the diversion of Internet users seeking Complainant to its competitors is evidence of bad faith registration and use. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users from Complainant to Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further alleges that Respondent receives
click-through fees from the businesses that are advertised through Respondent’s
<experianconsumer.com>
domain name. Complainant argues that
Respondent’s use of the disputed domain name to maintain a directory of
third-party links for which Respondent receives money for is further evidence
of bad faith registration and use. The
Panel agrees and finds that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) where
Respondent presumably collects click-through fees in association with the
various third-party links it displays through the confusingly similar disputed
domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (holding that the respondent was taking advantage of the confusing
similarity between the <lilpunk.com> domain name and the complainant’s
LIL PUNK mark by using the contested domain name to maintain a website with
various links to third-party websites unrelated to Complainant, and that such
use for the respondent’s own commercial gain demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <experianconsumer.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 3, 2010
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