The Complainant is Nocn, United Kingdom, represented by Virtuoso Legal Limited, United Kingdom.
The Respondent is Privacydotlink Customer 2940973, Overseas Territory of the United Kingdom / Yancy Naughton, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2019. On May 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2019, the Registrar transmitted by email to the Center its verification response:
(a) Confirming it is the registrar for the disputed domain name;
(b) Confirming that English is the language of the registration agreement; and
(c) 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 May 15, 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 May 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 May 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 21, 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 was formed in the United Kingdom in 1987 under the name National Open College Network. It formally changed its corporate name to “NOCN” in October 2013, although it was apparently referred to, and referred to itself, by its initials from very early on.
The Complainant is a learning credit-based awarding organisation. It provides education and training services and also provides accreditation services. There are around 2,000 centers throughout the United Kingdom which offer NOCN qualifications as well as international centers. According to the Complaint, the Complainant also operates throughout Europe and In the United States, India, China, Kenya, Madagascar, Mozambique, Mauritius, Bahrain, Turkey, Norway, Zambia, Malaysia, Sri Lanka, Greece, Bangladesh, Africa and the Gulf.
The Complainant has a number of registered trademarks for NOCN or figurative versions of that sign. The oldest registration is United Kingdom Registered trademark No. 00002317869, NOCN, for a range of goods and services in International Classes 9, 16, 41 and 42. It was registered on June 27, 2003. By way of further illustration, the Complainant also has a registered European Union Trade Mark No. 010872323 for NOCN for the same range of goods and services. This trademark was registered October 16, 2012. There is also an International Registration, No. 1179068, for the same mark and goods and services designating India, Kenya, Madagascar, Mozambique, Norway, Turkey and Zambia which was registered on July 9, 2013.
According to the Complaint, the disputed domain name was registered on February 17, 2004. It resolves to a website which consists of a number of pay-per-click (PPC) advertisements for training courses and other educational services. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or her case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of several registered trademarks for, or including, NOCN including for example the registered trademarks identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Disregarding the “.org” gTLD, the disputed domain name is identical to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, even if [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0,, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The use of the disputed domain to provide PPC advertising links to services competitive with the Complainant’s services does not qualify as offering goods or services in good faith under the Policy.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Apart from the gTLD, the disputed domain name consists of four letters. They do not appear to form a pronouncable word. The four letters comprising the second Level Domain element are not descriptive of training, education or accreditation services. They appear to have significance in relation to those types of services only because they are the name and trademark of the Complainant, which provides such services.
Accordingly, it appears that the Respondent has adopted the disputed domain name because of its significance as the Complainant’s name and trademark, particularly as the disputed domain name is being used for competitive PPC links. In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: July 10, 2019
Full & Egal Universal Law Academy