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, / klawnny king, Bluma, 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 September 4, 2020. On September 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 September 8, 2020, 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 September 9, 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2020. On September 30, 2020, the Center received an email by a company having its place of business under the address indicated as Respondent’s address on the website to which the disputed domain name resolves, confirming that it received the UDRP Complaint by the Center and informing that no company with the Respondent’s name was operating under this address. The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 9, 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 an American not-for-profit organization established in 1978 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 United States, the District of Columbia and four U.S. territories. It offers a variety of goods and services under its NCLEX trademarks, such as various exam and testing preparation and licensing services for nursing licenses. Since at least October of 1985, the Complainant has been conducting nationwide licensure exams known by the name NCLEX. The Complainant is the registered owner of numerous registered verbal trademarks worldwide consisting of the term NCLEX, amongst others the following trademarks: - United States Trademark Registration No. 2078246 (registered on July 15, 1997, for services in class 41) - United States Trademark Registration No. 2078247 (registered on July 15, 1997, for goods in class 16) - European Union Trademark No. 018022185 (registered on July 20, 2019) registered for goods and services in classes 16 and 41, respectively. According to the Registrar’s verification response, the Respondent registered the disputed domain name on March 25, 2020. It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a commercial website with the header “NCLEX LICENSURES” where exam preparation and licensing services for NCLEX nurse licenses are offered. On August 20, 2020, the Complainant sent a cease and desist letter to the Respondent to the email address listed respectively on the website available under the disputed domain name. It further sent copies of this letter via WhatsApp and text message to the phone number listed on that website. No response was received by the Complainant. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. The disputed domain name fully incorporates the Complainant’s trademarks NCLEX and contains the additional terms “real” and “for all.” This additional wording is generic and/or “wholly descriptive” of the Complainant’s services. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant did not grant any right for the Respondent to use the NCLEX trademarks or any variation thereof. Furthermore, the Respondent has no rights in the trademark NCLEX generally or specifically in the disputed domain name and adopted this domain name solely to trade off the Complainant’s goodwill in the Complainant’s NCLEX trademarks. Thirdly, in the Complainant’s view the disputed domain name was registered in bad faith, and is being used in bad faith. According to the Complainant, it was in particular registered in order to intentionally attempt to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s NCLEX trademarks. In order to support this allegation, the Complainant refers amongst others to the website to which the disputed domain name resolves, where the Respondent falsely alleges that it is a group of IT engineers working for the National Council of States Board of Nursing (NCSBN), in charge of the NCSBN’s database and of controlling all exams issued by NCSBN. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (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. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element NCLEX, amongst others United States Trademark Registration No. 2078246, United States Trademark Registration No. 2078247 and European Union Trademark No. 018022185. These trademarks predate the creation date of the disputed domain name, which is March 25, 2020. Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark NCLEX is fully included in the disputed domain name. It is the view of this Panel that the combination of the trademarks NCLEX with the dictionary terms “real” and “for all” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name: According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks NCLEX, e.g., by registering the disputed domain name comprising said trademarks entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In addition, it results from the Complainant’s undisputed allegations that the disputed domain name resolves to a website with the header “NCLEX LICENSURES” where exam preparation and licensing services for NCLEX nurse licenses are offered. The Panel assesses this use as being commercial, so that it cannot be considered 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 pursuant to paragraph 4(c)(iii) of the Policy. Finally, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers. Indeed, it results from the evidence provided by the Complainant, that the Respondent’s website clearly creates the impression of an association with the Complainant by claiming to be “a group of IT engineers working for the National Council of States Board of Nursing (NCSBN)” and “a renowned provider of NCLEX license to clients” etc. However, as the Complainant confirms, the Respondent is not affiliated with the Complainant nor an authorized service provider, the Panel finds that the Respondent does not accurately and prominently disclose the Respondent’s relationship with the Complainant (see section 2.8.1 of the WIPO Overview of 3.0). Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. It results from the Complainant’s documented allegations that the disputed domain name resolves to a commercial website where exam preparation and licensing services for NCLEX nurse licenses are offered under the header “NCLEX LICENSURES”. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademarks. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks when it registered said disputed domain name. The Panel finds that the registration of the domain name which contains the Complainant’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following: (i) the Respondent’s failure to submit a response to the Complaint or to provide any evidence of actual or contemplated good faith use; (ii) the Respondent’s failure to reply to the cease and desist letters sent before starting the present proceedings; (iii) the Respondent using false contact details (as confirmed by another company actually operating under the address indicated by the Respondent on the website to which the disputed domain name resolves); (vi) the Respondent’s false statements on the website at the disputed domain name that it is a group of IT engineers working for the National Council of States Board of Nursing (NCSBN), in charge of the NCSBN’s database and of controlling all exams issued by NCSBN; and (v) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0 ). In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant 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, Tobias Malte Müller
Sole Panelist
Date: October 23, 2020
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