The Complainant is National Council of State Boards of Nursing, Inc., United States of America (“United States”), represented by Vedder Price P. C., United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Hosting Links, BacklinksSEO, Cameroon. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2020, 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 June 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 15, 2020, the Center requested the Complainant to clarify the requested remedy in this case, and received an email communication from the Respondent, indicating “I am willing to sell this domain name and website to you guys […] for a good price”. The Complainant filed an amended Complaint on June 16, 2020. 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 June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel appointment process on July 12, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on July 16, 2020. 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 well-known independent, non-profit United States organization through which nursing regulatory bodies act and counsel together on matters of common interest and concern affecting public health, safety and welfare, including the development of nursing licensure examinations, in the 50 states, the District of Columbia and four United States territories. The Complainant was established in 1978 and, since at least October 1985, it has been conducting nationwide licensure exams known by the name NCLEX, and, since at least July 15, 1997, has registered and continuously used the trademark NCLEX to identify its goods and services related to nurse licensure exams in the United States. The Complainant offers a variety of goods and services under its trademark NCLEX, including but not limited to various instruction sheets, educational booklets and printed test sheets and educational services and development and distribution of educational materials in the field of nursing licensure and nursing examinations. The Complainant is the owner of several trademark registrations for NCLEX, including the following, as per trademark certificates submitted as annexes to the Complaint: - United States trademark registration No. 2078246 for NCLEX (word mark), registered on July 15, 1997, in international class 41; - United States trademark registration No. 2078247 for NCLEX (word mark), registered on July 15, 1997, in international class 16; - European trademark registration No. 018022185 for NCLEX (word mark), registered on July 20, 2019 in international classes 16 and 41; - Canadian trademark registration No. TMA958268 for NCLEX (word mark), registered on December 16, 2016 in international classes 16, 35 and 41; - Swiss trademark registration No. 733203 for NCLEX (word mark), registered on July 4, 2019 in classes 16 and 41. The disputed domain name was registered on September 17, 2019 and is currently pointed to a not active website. However, based on the screenshots submitted by the Complainant, which have not been challenged by the Respondent, the disputed domain name was previously pointed to a website promoting the sale of false registered NCLEX licenses online. 5. Parties’ Contentions A. Complainant The Complainant contends that disputed domain name The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized to use the trademark NCLEX and the Respondent’s use of the disputed domain name is intended only for commercial gain apart from any reasonable fair use. In addition, the Complainant asserts that the Respondent has no rights in the trademark NCLEX or in the disputed domain name as the Respondent adopted this name and the dispute domain name solely to trade-off the Complainant’s goodwill in the Complainant’s trademark NCLEX. The Complainant argues that the webpage at the disputed domain name describes the Respondent’s services offered in connection with the provision of NCLEX licenses with the deliberate purpose of attracting consumers to its website and inducing them to believe that such website is associated with the Complainant. With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name was registered in order to intentionally attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark NCLEX as well as to prevent the Complainant, owner of the trademark NCLEX, from reflecting the trademark in a corresponding domain name. The Complainant emphasizes that the Respondent has not only falsely declared its contact details as being those of the Complainant, but also that it can purportedly “provide questions and answers for any session once the test taker has authorization to test”, that it can register, edit and upgrade the test taker records and produce both real and registered NCLEX license details. Lastly, the Complainant underlines that the Respondent’s actions also demonstrate that the Respondent had actual knowledge of the Complainant and its trademark NCLEX at the time it registered the disputed domain name. B. Respondent On June 15, 2020, the Center received an email communication from the Respondent, indicating “I am willing to sell this domain name and website to you guys […] for a good price”. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark NCLEX based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the Complainant’s trademark NCLEX is entirely reproduced in the disputed domain name, with the mere addition of the descriptive term “easy” and of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(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 organization) 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.” In the case at hand, by not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. As mentioned above, the disputed domain name was previously pointed to a website promoting the Respondent’s provision of false NCLEX licenses for the licensing of nurses in the United States and Canada and misappropriating the Complainant’s contact details. In view of the above-described use of the disputed domain name, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Moreover, as stated in section 2.13.1 of the WIPO Overview 3.0, panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. As to the bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark NCLEX in connection with the Complainant’s services and of the fact that the disputed domain name fully incorporates the Complainant’s trademark NCLEX, which is a coined term, as the dominant portion of the disputed domain name, the Respondent’s registration of the disputed domain name cannot amount to a mere coincidence. Indeed, in view of the fact that the Respondent has not denied knowledge of the Complainant’s trademark and that it indeed made reference to the Complainant’s NCLEX services and to the Complainant’s contact details on the website to which the disputed domain name resolved, the Panel finds that the Respondent clearly registered the disputed domain name with the Complainant’s trademark in mind. With reference to the use of the disputed domain name, the Panel finds that, in light of the contents of the Respondent’s website as demonstrated by the screenshots on records, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website and the services promoted therein, according to paragraph 4(b)(iv) of the Policy. As mentioned above, at the time of the drafting of this Decision, the disputed domain name does not resolve to an active website. Prior UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith under certain circumstances, as decided, inter alia, in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the case at hand, in view of i) the distinctiveness of the Complainant’s trademark NCLEX; ii) the Respondent’s registration of a domain name highly confusingly similar to the Complainant’s prior trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the Complaint; v) the implausibility of any good faith use to which the disputed domain name may be put; and vi) the Respondent’s prior use of the disputed domain name to impersonate the Complainant and promote the provision of false NCLEX licenses on the correspondent website, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. See section 3.3 of the WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy. 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 Luca Barbero
Sole Panelist
Date: August 3, 2020
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