The Complainant is Consumer Reports, Inc. of New York, New York, United States of America ("United States" or "U.S."), represented by Cozen O'Connor, United States.
The Respondent is Wu Yan, Common Results, Inc. of Victoria, Seychelles, represented by Marben Luis Tan, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Blue Razor Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2017, 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 March 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. The Response was filed with the Center on March 8, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 16, 2017. 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 a United States based non-profit consumer product testing and advocacy organization that publishes in print and digital media a family of "Consumer Reports" publications. It was formed as an independent, nonprofit organization in 1936, and has been using the CONSUMER REPORTS trademark continuously since 1942. In November 2016, the Complainant changed its name from Consumers Union of United States, Inc. to Consumer Reports, Inc.
The Complainant owns various trademark registrations for marks comprising or containing the words "Consumer Reports" including for example U.S. Trademark Registration No. 672,849 for periodic publications, registered on January 20, 1959.
The Disputed Domain Name was registered on January 7, 2010. The Respondent operates a website linked to the Disputed Domain Name which provides a range of materials and articles relating to eyeglasses. The following features of this website are relevant:
1. It contains text which states: "This site is in part funded by advertising and sponsorships including search advertising. EyeGlasses Consumer Reports sells advertising and sponsorships on the site to companies that provide eye care products and services. We also sell eyeglasses accessories like eyeglasses cases and repair kits on our site as a convenience to our consumer users. All eyeglasses, contacts and eye care related articles are provided to you in-depth to ensure consumers have a relevant and well written content. As you can imagine, all websites must be paid for somehow to cover their costs."
2. It carries various disclaimers. On the bottom of every page is the text: "Not associated with ConsumerR." This appears in faint grey text on a dark grey background and is difficult to read. On the landing page of the site text can be found which reads "Please note that is Not affiliated in any way with Consumer Reports." It is necessary to scroll down to see this text and it appears alongside a block of textual material of the same size and colour and is not prominent. The same text is also found at the end of a short paragraph on the "About us" page. 5. Parties' Contentions A. Complainant
The Complainant argues that the Disputed Domain Name is confusingly similar to the CONSUMER REPORTS trademark, in which the Complainant has rights, given that it incorporates the CONSUMER REPORTS trademark as a whole, with the additional generic term "eyeglasses".
The Complainant contends that the Respondent is using the fame of the Complainant's Consumer Reports brand to lend credibility to his business and create a false impression that the Respondent is affiliated with the well-known Consumer Reports brand.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, that it has not licensed or otherwise permitted the Respondents to use its CONSUMER REPORTS trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the Disputed Domain Name nor has he acquired any trademark rights in the name "Consumer Reports".
The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant further argues that the Disputed Domain Name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondent registered the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark and to disrupt the Complainant's business. It also says that content on the Respondent's website has been "slavishly copied" from its website
For all of the above reasons, the Complainant requests the transfer of the Disputed Domain Name. B. Respondent
The Response in this case is lengthy and to some extent repetitive. The main points the Respondent relies upon are as follows.
The Respondent admits he was aware of the Complainant. He says "Respondent is well aware of the Complainant's mark, before Respondent had its domain registered, he made sure that there was no prior registry of a domain that deals specifically with eyeglasses".
He says his site is a useful resource about eyeglasses and is funded by advertising and sponsored links. He says that the Complainant has no rights in the term eyeglasses and using that term in combination with the words "consumer reports" is not confusing. He says the Complainant has no rights in the term eyeglassesconsumerreports. He also says the Complainant's trademark includes a stylised form of the letters "CR" in front of the words "consumer reports" which he does not use. He says the term "consumer reports" is generic and descriptive and his use of that term in combination with "eyeglasses" is permissible. He also relies upon the disclaimers he has placed on his website. He says that the Complainant charges consumers for access to its services and does not like his website because the Respondent provides the information for free. He says this is the real reason the Complaint has been brought and it amounts to Reverse Domain Name Hijacking ("RDNH").
He also says that after more than seven years of operations, the Respondent has become commonly known by the Disputed Domain Name .
He also says that in seven years he has spent a large amount of time and money developing his website and the Complaint's delay should preclude it from bringing this Complaint. He says the Complainant has been aware of his website since at least 2011.
He denies that any text on his website is copied from the Complainant's website and says the two websites look very different. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various trademarks including or consisting of the words "consumer reports" (the "CONSUMER REPORTS trademarks"). The Respondent is incorrect to say these trademarks involve a stylized form of the letters CR. The Complainant has registrations for CONSUMER REPORTS on their own as a word mark. In the light of these registrations the Panel rejects the Respondent's arguments that the words "consumer reports" are non distinctive such that the Complainant has no relevant rights. The Panel does however accept these are ordinary English words which is a factor to be taken into account when considering the Respondent's actions (see below).
The Panel holds that the Disputed Domain Name is confusingly similar to the CONSUMER REPORTS trademarks. The Disputed Domain Name, as registered by the Respondent, incorporates the CONSUMER REPORTS trademarks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The only difference in the present case is the addition of the descriptive term "eyeglasses". This addition does not suffice to negate the confusing similarity between the Disputed Domain Name and the CONSUMER REPORTS trademarks.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here "eyeglasses") to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, the mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
It does not matter that the Complainant has no trademark rights in the term eyeglasses. It is clear that the Complainant publishes reports about all sorts of goods and the addition of a descriptive term for a particular type of goods, in this case eyeglasses, does not remove the confusing similarity between the Disputed Domain Name and the Complainant's trademark. The Disputed Domain Name suggests it is likely to relate to a report produced by the Complainant concerning eyeglasses.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
(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 organisation) 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.
The Respondent relies upon (i) and (ii). So far as (i) is concerned it seems to the Panel that the question of whether the Respondent acted bona fide depends upon his reasons and motives for choosing the Disputed Domain Name. A difficulty in the present case is that the Complainant has provided almost no information about its business other than showing that it is long established and has a number of trademarks dating back to at least 1959. It has placed in evidence one article, being a report on eyeglasses contained in what would appear to be its November 2006 journal. The Panel is not told how many customers it has, how much revenue it generates, what sort of publications it produces, what the circulation of those publications is, or indeed anything else that would usefully assist the Panel in determining how well known the Complainant is. It is the case that the words "consumer" and "reports" are ordinary English words and it is at least conceivable that a person could independently use those words as part of a domain name in connection with some sort of business or service offering reports of interest to consumers, while having no knowledge of the Complainant. In circumstances where there is little evidence as to how well known the Complainant's business is, such a case could conceivably be advanced with credibility, particularly by a party based in a different country to the Complainant. That is not however the case advanced by the Respondent. He admits that he was aware of the Complainant and apparently having established that the Complainant had no trademarks involving the word "eyeglasses" decided he was free to adopt the Disputed Domain Name and use it for his website, given that it contained the various disclaimers described above.
The Panel does not regard such an approach as bona fide. The Respondent's admission of knowledge of the Complainant, combined with the disclaimers on his website, clearly shows he was expecting members of the public who were searching for reports prepared by the Complainant concerning eyeglasses to arrive at his website. He makes money out of advertising and sponsored links on his website, and the Panel infers the inclusion of the Complainant's trademark in the Disputed Domain Name was part of a deliberate strategy to increase visitor numbers to his website. There were of course any number of other suitable names including the word eyeglasses which he could have chosen as a domain name for use with a website providing information about eyeglasses. The Panel considers the choice of the Complainant's trademark as part of the Disputed Domain Name was deliberately intended to attract visitors looking for information prepared by the Complainant. That is not a bona fide offering of goods or services.
So far as (ii) is concerned the Respondent has produced no evidence to substantiate his claim that he is commonly known as "eyeglassesconsumerreports". It seems to the Panel manifestly unlikely that the Respondent as an individual is known by such a cumbersome term. The fact that his website attracts visitors (although no details of the number of such visitors have been provided) is not the same thing as being known by that name. Indeed it seems to the Panel to be more likely that such visitors are drawn to the website as a result of confusion with the Complainant, rather than because of the Respondent being known by that name. The Panel rejects this argument.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, for reasons discussed above, the Panel concludes that the Disputed Domain Name was adopted by the Respondent because the inclusion in it of the Complainant's trademark was likely to increase visitor traffic to the Respondent's website. Put simply individuals searching for reports generated by the Complainant about eyeglasses would find themselves at the Respondent's website.
The Panel considers that on the balance of probabilities the Respondent was by use of the Disputed Domain Name seeking to suggest his website had a connection with the Complainant in the course of trade. It does not matter whether or not customers on reaching the Respondents' website realize it is not affiliated to the Complainant. In fact in the present case it is far from clear that any visitors would realize this. The disclaimers the Respondent relies upon are far from prominent and are not likely to be noticed by most visitors, who may well continue viewing the site believing it is that of the Complainant. However the point does not matter – bad faith is established by use of the Disputed Domain Name to attract customers (typically customers who find the Disputed Domain Name as a result of an Internet search). As such the Respondent's behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "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 or service on your web site or location".
In reaching this conclusion the Panel also notes that portions of the Respondent's website are remarkably similar to text appearing in the Complainant's November 1996 report on eyeglasses. The Panel would not characterize these as "slavishly copied" which is what the Complainant says, but they clearly are sufficiently similar to allow the Panel to conclude the Respondent used the Complainant's article as source for his text. This reinforces the Panel's view that the Respondent is acting in bad faith. Thus for example:
Complainant text:
"Shop for glasses these days, and you're likely to wind up bleary-eyed. You have to choose from among thousands of frames and confusing combinations of coatings and lenses available from your eye doctor, your neighborhood optician, chain stores, warehouse clubs, and Internet merchants. If you're not careful, you could end up paying hundreds of dollars unnecessarily. Indeed, price was the biggest gripe among the 92,000 recent eyeglass buyers surveyed by the Consumer Reports National Research Center. Though 75 percent of respondents said that overall they were very happy with their purchase, only 54 percent said they felt the same way about the price they paid. CR found, however, that glasses don't have to cost that much. Our survey discovered a surprising standout: Costco, which has become the nation's fifth largest seller of eyewear. Not only were its prices low, but it also garnered applause for service, scoring nearly as well overall as private medical offices and small independent optical shops, which continue to top all categories but price."
Respondent text:
"Just like many consumers these days looking for glasses, you too are likely to wind up with double vision from the choices of frames and confusing combinations of coatings and lenses available from your eyeglasses retailer, your eye doctor, local optician, eyeglasses chain stores, warehouse clubs offering eyewear, and new internet eyeglasses retailer. If you're not educated in retail eyeglasses buying, you could end up paying hundreds of dollars unnecessarily. Price is the biggest gripe among consumers buying eyeglasses. In our Buying Eyeglasses Consumer Reports research we uncovered recent surveys information showing less than half of eyeglasses buyers reporting they were satisfied with the price they paid. However, our own in-house review uncovered that glasses don't have to cost as much as most consumers think and pay in bricks and mortars eyeglasses retailer. In our in-house reviews we discovered a surprising standout: Independent online eyeglasses retailers. While wholesale shopping clubs like Costco or Sams and even Walmart are now among the nation's largest sellers of eyewear. The choices they offered and pricing where not as favorable as those available online in some perspectives. While these brick and mortar chains offered low prices, but their frames did tend to be on the lower end for overall quality in comparison to higher end flex titanium frames available at other independent optical stores."
Other examples of a similar nature can be found.
So far as the other points made by the Respondents are concerned the Panel's views are as follows.
Disclaimers – as indicated above the Panel does not consider the disclaimers relied upon by the Respondent to be readily visible. In any event, even if they were, the Panel adopts the consensus view set out in paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states as follows:
"3.5 What is the role of a disclaimer on the web page of a disputed domain name?
Consensus view: The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant's trademark. However a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest."
In the present case even if the disclaimers had been prominent the Panel would conclude that the overall circumstances point to the Respondent's bad faith and the mere existence of the disclaimer cannot cure such bad faith. The disclaimers also confirm that the Respondent was aware of the Complainant and that his website was likely to attract visitors looking for the Complainant's reports.
Delay – So far as delay is concerned the Panel adopts the consensus view set out in WIPO Overview 2.0 on this issue, as follows:
"4.10 Does delay in bringing a complaint prevent a complainant from filing under the UDRP?
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant."
In the present case the Panel does not consider that any delay is such as to preclude the Complainant from succeeding. The Panel does not consider relevant the fact that the Respondent has spent effort and money during this period developing and promoting his website. He has in any event also earned revenue during the same period.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all 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. It follows that the Respondent's claim that the Complainant is guilty of Reverse Domain Name Hijacking does not succeed.
Nick J. Gardner
Sole Panelist
Date: March 22, 2017
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