The Complainants are Experian Limited and Experian Information Solutions Inc. (hereinafter jointly “the Complainants”) of United Kingdom of Great Britain and Northern Ireland and the United States of America respectively, represented internally.
The Respondent is Brenda Needham of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2011. On July 11, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 13, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2011.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 9, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Pursuant to the Rules, paragraph 11(a), the language of the proceedings is English. 4. Factual Background
The Complainants are Experian Limited, a company incorporated in England and Wales, United Kingdom, and Experian Information Solutions, Inc., a company incorporated in the United States.
The Complainants are part of the Experian group of companies, which is a well-known information services company.
The Complainants own several trademark registrations for EXPERIAN. Particularly:
European Registration No. 543785, EXPERIAN, in classes 9, 16, 35, 36, 38, 41 and 42;
European Registration No. 5097481, EXPERIAN, in classes 9, 16, 18, 25, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
United States registration No. 2,260,187, EXPERIAN, in classes 35, 36 and 42;
United States registration No. 2,263,923, EXPERIAN, in classes 35 and 36;
United States registration No. 2,240,086, EXPERIAN, in class 9; and
United States registration No. 2,231,322, EXPERIAN, in class 36.
The Respondent is Brenda Needham, located in the United States of America.
The disputed domain name was registered by the Respondent on December 28, 2009. 5. Parties’ Contentions A. Complainants
The Complainants assert to be the two main legal entities in the Experian group, owning trademark rights in EXPERIAN.
The Complainants avert that the name “experian” was invented specifically for the Experian business and that its use began in about 1996. Moreover, they submit that it is not possible for a third party to accidentally use such invented word.
The Complainants allege not to be aware of any evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Complainants contend that the web page at “www.” is a simple “holding” page.
Moreover, the Complainants state they are not aware of the Respondent having filed a trademark application for the word “experian”.
The Complainants also contend that the Respondent registered the disputed domain name in order to prevent the Complainants from reflecting their trademark EXPERIAN in the corresponding domain name.
In that connection, the Complainants submit a list of other domain names also registered by the Respondent which include well-known brands and names of personalities.
The Complainants deny having any business relationship with the Respondent or having authorized the Respondent to use the name “experian” whether as a domain name or otherwise. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For a complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainants have filed relevant evidence showing that “experian” is a fantasy word used by the Complainant for identifying specific information services. Moreover, they have successfully proved to be part of the Experian group of companies.
In that sense, the Complainants have filed relevant evidence showing that they hold trademark registrations for EXPERIAN in Europe and the United States.
The Complainants have also succeeded to prove that they own at least six domain names containing the word “experian”.
Therefore, the Complainants have proved to the Panel’s satisfaction that the disputed domain name reproduces the exact same trademark over which the Complainants have rights, despite the addition of the top level domain suffix “.mobi”.
In this sense, it has been well established that the top-level designation used as part of a domain name may be disregarded (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark over which the Complainants have rights, and therefore, the Complainants have succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainants must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainants’ contentions and, therefore, has not made such showing.
Moreover, there is no evidence showing that the Respondent is commonly known as or identified by EXPERIAN. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent in connection with its rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that the Complainants must prove is that the disputed domain name has been registered and is being used in bad faith. The Policy in paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainants have identified themselves as the two main legal entities in the Experian group, dedicated to provide organizations and individuals with information services, credit services, decision analysis and marketing services, which the Panel has been able to ascertain through the documents provided by the Complainants.
Moreover, the Complainants have proved to the Panel’s satisfaction that they own trademark registrations for EXPERIAN.
Likewise, the Complainants have proved to the Panel’s satisfaction that the word “experian” is currently being used by the Complainants in order to identify the group of companies to which they belong, and that it has no literal meaning.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent in all likelihood was aware or must have been aware of the Complainants’ trademark before registering the disputed domain name , which evidences bad faith registration.
On the other hand, the Complainants have proved to the Panel’s satisfaction that the Respondent is using the disputed domain name simply as “holding” page.
Such use is known as “passive holding”, which has been established as a use in bad faith (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003), especially when there is no evident legitimate use of the disputed domain name.
In that connection, it has long been held that “passive holding” may fall within paragraph 4(a)(iii) in appropriate cases, particularly ever since the circumstances enumerated in sub-paragraphs (i), (ii) and (iii) of paragraph 4(b) do not expressly require active use as such. Indeed, many cases falling within sub-paragraph (i) would be cases in which no such active use (in the sense of, for example, posting active content on the website at the disputed domain name, as opposed to, for example, actively engaging in offering to sell the disputed domain name to the trademark owner for profit) takes place (Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
For these reasons, the Panel finds that the Respondent both has registered and is using the disputed domain name in bad faith, and that the Complainants have therefore satisfied the third requirement of (4)(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Experian Limited.
Miguel B. O'Farrell
Sole Panelist
Dated: August 18, 2011
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