The Complainant is Dun & Bradstreet International Limited of Berkeley Heights, New Jersey, United States of America ("United States"), represented by SafeNames Ltd., United Kingdomof Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Khan Ali of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2016. On September 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 20, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 4, 2016. 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. 4. Factual Background
The Complainant is based in the United States and exploits data processing and provision of information services. It created in 1963 a new system to identify businesses numerically for data-processing. This system is called the Data Universal Numbering System, commonly referred to as the D&B D-U-N-S Number which has become a business identifier for the United Nations, the European Commission and the United States Government.
The Complainant is the owner of several trademark registrations amongst which are the following:
- German Trademark Registration No. 39516691 for D-U-N-S NUMBER, registered on June 1996 in classes 09 and 35;
- International Trademark Registration No. 867778 for D-U-N-S, registered on April 5, 2005 in classes 35 and 36, and
- European Trademark Registration No. 84228 for DUNS, registered on July 20, 1998 in classes 16, 35 and 36.
The disputed domain name was registered on June 1st, 2016. Currently no active webpage resolves from the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that it operates worldwide with over 200 offices in Europe, Asia Pacific and Latin America, having the largest global commercial database providing over 250 million business records to its clients. It further asserts that its D-U-N-S Number system, created in 1963 for the credit report industry, has become the standard business identifier for the United Nations, the European Commission and the United States Government.
In the Complainant's point of view the disputed domain name is confusingly similar to its trademarks merely using the plural of the word "number" from the D-U-N-S Number trademark and suppressing the hyphens (which in any event are not pronounced) thus creating an overall impression of association with the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) the Respondent has not been authorized by the Complainant to use the D-U-N-S Number / D-U-N-S trademarks as a domain name or in any other manner;
(ii) the Respondent has not been commonly known by the disputed domain name given that investigations into the Respondent revealed that her true name is Rubina Begum Ali Khan, although this might not be accurate given that she uses multiple names and email addresses; and
(iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
As to the registration of the disputed domain name in bad faith the Complainant contends that it was done clearly in bad faith given that it has been using the D-U-N-S Number trademark for over 50 years, well before the registration date of the disputed domain name, what is clearly an indicative of the Respondent's knowledge of the Complainant and accordingly bad faith in the registration of the disputed domain name.
The Complainant further argues that even though the Respondent is not required to conduct a trademark search prior to registering a domain name, a simple online search would have revealed the Complainant's interest, should the Respondent not have been aware of the same.
Furthermore, the Complainant sent a cease and desist notification to the Respondent on July 19, 2016 outlining its rights but the Respondent did not reply what should be regard as willful infringement of the Complainant's rights.
In addition to that, it appears that the Respondent (although using variations of her name and different email addresses) is the owner of a large domain name portfolio which contain third parties trademarks (Annex 4 to the Complaint).
Moreover, the disputed domain name has been passively held, given that it resolves to a parked page, what has already been found as an indication of bad faith registration and use of a domain name when present the knowledge that the domain name infringes upon another party's trademark rights. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the D-U-N-S Number / D-U-N-S / DUNS trademarks, duly registered in various countries.
The Panel finds that the disputed domain name merely reproduce the Complainant's mark with the suppression of the hyphens and addition of the letter "s" indicative of plural, not adding however any distinctiveness and thus being confusingly similar therewith. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent's rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not authorized the Respondent to use the D-U-N-S Number / D-U-N-S / DUNS trademarks.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain name appear to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduce in its entirety the Complainant's half a century old trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other 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 respondent's website or location.
Past UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that "[…] panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity".
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
(ii) the absence of reply to the warning letter the Complainant sent before filing the Complaint (Annex 4 to the Complaint);
(iii) the use of a false address in the Whois data; and
(iv) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties trademarks (Annex 4).
Taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
For the reasons stated above, the Respondent's conduct amounts, in this Panel's view, to bad faith registration and use of the disputed domain name. 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 the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 8, 2016
Full & Egal Universal Law Academy