The Complainant is RELX Inc. of New York, New York, United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, United States / Ashutosh Negi of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2019.
The Center verified that the Complaint together with the amended 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 January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on February 20, 2019. 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 multinational information and analytics company and, through a wholly owned subsidiary, produces ISC West, a conference in the fields of physical security. The next ISC West conference is scheduled to take place in 2019.
The Complainant is the proprietor of United States trade mark registration number 3,142,285 for ISC WEST (the “Trade Mark”), registered on September 12, 2006. The Trade Mark records a date of first use of March 11, 1997.
The Respondent registered the Domain Name on September 20, 2018, and uses it to provide access to a website featuring prominent references to the ISC West conference and inviting Internet users to submit their personal data. The website accessed via the Domain Name reproduces content from the official ISC West website. Furthermore, the website contains a disclaimer stating: “We are not official society and neither associated with ISC WEST 2019. We provide information independently related to the event and accommodation to the participant. For More Information Visit ISC WEST 2019 Official Website. Click Here.”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark.
It further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name since it is not commonly known by the Domain Name and uses the Domain Name to refer to the Complainant’s conference rather than its own bona fide offering of goods or services. Thus, it is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant asserts that the Respondent is not authorized or licensed to use the ISC WEST mark.
The Complainant submits that since the Respondent must have known of the Trade Mark when it registered the Domain Name and has used the Domain Name to confuse and mislead consumers by creating a website that appears to be, but is not in fact, related to or sponsored by the ISC West conference, it has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Trade Mark.
The Panel also accepts that the Domain Name is confusingly similar to the Trade Mark. In particular, ISC WEST is recognizable within the Domain Name. The addition of the year “2019” (whether or not it is a reference to the year of the next ISC West Conference) and the generic Top-Level Domain (“gTLD”) suffix “.com”, does not in any way prevent a finding of confusing similarity. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case by stating that it has not authorized or consented to the registration or use of the Domain Name by the Respondent. The Complainant has also shown that the Respondent has used the Domain Name to provide access to a website that appears to be intended to confuse users into believing that they are visiting a website associated with the Complainant, in order to invite them to submit personal data, for an unknown purpose. While the website contains a disclaimer, the composition of the Domain Name is such that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Such use of a domain name is not a bona fide offering that amounts to a legitimate noncommercial or fair use of a domain name.
The Respondent has failed to respond to the Complaint and there is no evidence that the Respondent has acquired any unregistered rights to the combination “isc west” or that it is commonly known by any name that corresponds to it. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.
Having reviewed and weighted the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was registered by the Respondent with the Complainant in mind. “ISC West” is distinctive of the Complainant’s conferences yet the Respondent chose to register a domain name that is exclusively comprised of ISC West and the year of the next ISC West conference.
Furthermore, the Respondent has not put forward any argument to attempt to explain or defend that unauthorised use of the Trade Mark. Combined with the longevity of the Complainant’s use of the Trade Mark, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Trade Mark when it registered the Domain Name, and that it also knew that it had not been authorized to do so. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith.
The Panel also finds that the Domain Name is being used in bad faith. The use of the Trade Mark for commercial purposes unauthorised (and indeed objected to) by the Complainant, seemingly for the purpose of deceiving users into submitting personal data, is inconsistent with the Complainant’s exclusive rights in the Trade Mark.
The Panel finds that by the prominent use of the Complainant’s trade mark, the website at the Domain Name is being used in order to misrepresent itself as an official website of the Complainant or at least to deceive Internet users as to the affiliation, connection, or association of the website with the Complainant. Moreover, as previously noted, the composition of the Domain Name is such that it effectively impersonates or suggests sponsorship or endorsement by the Complainant
With regards to the disclaimer, the Panel notes that the use of the website at the Domain Name cannot be considered bona fide as the overall misleading impression that it is in some way affiliated with the Complainant is not dispelled by such disclaimer, which appears only in small text and not in any prominent position. With reference to section 3.7 of WIPO Overview 3.0, the Panel notes that where the overall circumstances of a case point to a respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith.
As a result of the above, the Panel finds that the Domain Name has been registered and is being used in bad faith. 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.
Gareth Dickson
Sole Panelist
Date: March 7, 2019
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