The Complainant is Consumer Reports, Inc., United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Marcin Frackiewicz, Poland, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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 September 2, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. That same day, the Center received an email communication from the Respondent, in response to which the Center, on September 3, 2019, sent an email communication to the Parties inviting them to explore settlement negotiations. No response was received from either Party regarding settlement negotiations. On September 9, 2019, the Complainant submitted an amended Complaint. 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 September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent sent an email communication to the Center on October 1, 2019. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 11, 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 established in the United States in 1936 as a non-profit consumer product testing and advocacy organisation under the name Consumers Union of United States Inc. According to the Complaint, the Complainant has been using the trademark CONSUMER REPORTS continuously since at least 1942 in connection with its product testing and ratings, research, journalism, public education and journalism. In November 2016, the Complainant formally changed its name to Consumer Reports Inc. The Complainant has provided evidence of evidence of numerous trademarks registered in the United States for, or based on, CONSUMER REPORTS. For present purposes, it is sufficient to note: (a) United States Trademark No. 672,849, CONSUMER REPORTS, for periodic publications which was registered on January 20, 1959; (b) United States Trademark No. 5,064,394, CONSUMER REPORTS, for downloadable software in the nature of a mobile application that allows users to access information in the fields of consumer products and service testing and evaluation and downloadable audiovisual files in International Class 9; providing consumer information in the field of testing and evaluation of consumer products and services via a global computer network in International Class 35; and providing a website related to those matters in International Class 41. This trademark was registered on October 18, 2016 and claimed first use in commerce in respect of those goods and services from various dates in 2011; and (c) United States Trademark No.5,751,644, CONSUMER REPORTS, in respect of public advocacy services in International Class 35 on behalf of the consumer interest and lobbying services in relation to promoting the interests of consumers, which was registered on May 14, 2019. The Complaint also includes evidence of a number of registered trademarks in the United States based on CONSUMER REPORTS including CONSUMER REPORTS TV NEWS and CONSUMER REPORTS ON HEALTH. According to the Registrar, the disputed domain name was registered to the Respondent on March 28, 2019. The disputed domain name resolves to a website headed “Market Reports”. From the materials annexed to the Complaint, there appears to be one section headed “Business”. At the time the decision is being prepared, there are five sections: “Business”, “Technology”, “Healthcare”, Science” and “Contact”. In the materials filed with the Complaint, the included a number of links to articles in English published by third parties. For example, under “Business” there are links to articles entitled: - Precision Alloy Market Industry Analysis, Trend and Growth, 2019-2025; both provided by an entity called “Transparency Market Research”, - Global Gel Electrophoresis System Market 2019: Report with Recent Statistics, Future Growth Predictions 2024; and numerous other reports provided by “Orbis Research”. Apart from the “Contact” page, the pages under the four headings on the website as viewed by the Panel also contain headlines and links to third party articles in similar fashion. Many of the articles appear in two or more of the different sections. The “Contact” page simply has a function for online submission of name, address and message details. 5. Discussion and Findings 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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Who is the Respondent Paragraph 1 of the Rules defines the respondent to an administrative proceeding under the Policy as “the holder of a domain-name registration against which a complaint is initiated.” That is, the person recorded in the WhoIs record as the registrant of the disputed domain name at the time the Complaint is filed. The holder of the disputed domain name identified by the Registrar behind the privacy service is Marcin Frackiewicz. The Center received an email from Mr. Frackiewicz on September 3, 2019. In that email, Mr. Frackiewicz stated that he was not the owner of the disputed domain name, but had registered it on behalf of one Karol Donimirski whose address was in Poland. The email did not explain how the disputed domain name came to be registered in Mr. Frackiewicz’ name if the disputed domain name is in fact owned by Mr. Donimirski. In accordance with the requirements of the Policy, the Center notified the Complainant and the Commencement of the Administrative Proceeding to both WhoisGuard Protected, WhoisGuard Inc. and Marcin Frackiewicz as the persons formally recorded in the WhoIs record as the registrant. Despite the email received from Mr. Frackiewicz on September 3, 2019, the email received on October 1, 2019 – the due date for the Response – was sent by Mr. Frackiewicz. In these circumstances and having regard to paragraph 1 of the Rules, therefore, the Panel finds that Mr. Frackiewicz is the Respondent for the purposes of this administrative proceeding and the Complaint has been properly notified to the Respondent. B. 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 the registered trademarks in the United States for CONSUMER REPORTS 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 “.com” gTLD, the disputed domain name differs from the Complainant’s trademark only by the addition of the descriptive, dictionary term “review” after the trademark. The addition of such a descriptive term to the does not diminish the resemblance of the disputed domain name to the Complainant’s trademark for the purposes of the Policy. See e.g., WIPO Overview 3.0, section 1.8. The Complainant’s trademark is clearly recognisable both visually and aurally within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, 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. C. 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. UDRP 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 in any way. 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. 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. In the Response received on October 1, 2019, the Respondent states that the name “Consumer Reports” indicates a product type and is not the unique name of a company. The Respondent states that his clients also publish “Consumer Reports” and market reports. The Respondent further states that “it is unrelated and dishonest in Europe.” Thus, the Respondent appears to be relying on the allegedly descriptive nature and use of the term “consumer reports” by its clients in, it appears, Poland or, more broadly, Europe where, the Respondent appears to be contending, the Complainant has no rights. The Respondent also claims to have spent USD 40,000 for the website, domain and content. The Respondent has not provided any documentary evidence to support that claim. Accordingly, that claim has not been established in this proceeding. There is no evidence that the Respondent, or the Respondent’s clients, had been using the expression “Consumer Reports” or “Consumer Reports Review” in Poland (or anywhere else) before the registration of the disputed domain name in March this year, which is, of course, decades after the Complainant began using the expression. The Panel notes that the descriptive use argument would appear to be unavailable (if available at all) in the face of the Complainant’s registered trademarks at least to the extent that the website is accessible by people in the United States. The nature of the website to which the disputed domain name resolves has been described above. It consists of a number of short extracts from third party sites with links to the full report on those sites. It is not clear whether these extracts and links are pay-per-click links or what, if any, association there is between the Respondent (or the Respondent’s clients) on the one hand and, on the other, the third party publishers of the articles or reports which are linked from the website. The articles are in English, not Polish. There is nothing on the website which suggests that it is directed to a Polish or “European” audience. On the contrary, the website appears to be directed to the world at large including browsers from the United States and, indeed, the linked articles, or many of them, appear to be published by United States businesses and quote monetary values in US dollars. The articles linked from the website are in the nature of reports, as their titles suggest. The reports are directed to business or industry readers. As the titles extracted above suggest, it would be inaccurate to describe the linked articles as consumer reports. While it is possible that some members of the general public might find the articles informative and interesting, the articles or links are not reports or reviews of products or services of interest to consumers. In these circumstances, the Panel cannot find that the disputed domain name is being used in a purely descriptive sense. As the disputed domain name is not being used in a purely descriptive sense, the use being made of the disputed domain name does not qualify as the provision of services in good faith under the Policy. It appears rather to be seeking to trade on the trademark significance of the term “Consumer Reports”. Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case raised by the Complainant. Therefore, the Complainant has established the second requirement under the Policy. D. 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 Ltd,WIPO 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. For the reasons discussed in section 5C above, the Respondent (or his clients) is not using the disputed domain name in good faith under the Policy. In view of the short passage of time between the registration of the disputed domain name and the commencement of the website, it can be inferred that the Respondent registered the disputed domain name for the purpose of using it in the way it is being used. Therefore, the Panel finds that, on the record in this administrative proceeding, the Complainant has established that the Respondent has both registered and used the disputed domain name 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, Warwick A. Rothnie
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Sole Panelist
Date: October 28, 2019
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