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 Registration Private Domains By Proxy, LLC, United States / NCLEX Office, 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 November 4, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 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 November 11, 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 November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on January 6, 2021. 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 United States not-for-profit organization through which nursing regulatory bodies work together on matters relevant to general healthcare and the nursing profession. The Complainant, commonly abbreviated as NCSBN, has since 1985 been conducting licensing exams across the United States that are known as the NCLEX. The Complainant is the owner of trademark registrations for marks consisting of the acronyms “NCSBN” (the ”NCSBN Mark”) and “NCLEX” (the “NCLEX Mark”, with the marks being collectively referred to in this decision as the “Complainant’s Marks”) in the United States. The NCSBN Mark is registration number 2944863 registered on April 26, 2005 for class 41 services with a first use of 1980 while the NCLEX Mark is registration number 2078246, registered on July 15, 1997 for services in class 41 with a first use of 1981. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s Marks; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the Complainant’s Marks, having registered the Complainant’s Marks in the United States and other jurisdictions. The Domain Name is identical or confusingly similar to the Complainant’s Marks. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers exam preparation and licensing services in direct competition with the Complainant under the same marks as the Complainant, which may amount to fraud. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the Complainant’s Marks, having a registration for each of the Complainant’s Marks as a trademark in the United States. Disregarding the “.info” generic Top-Level Domain as an essential element of any domain name and noting the addition of a hyphen between the NCSBN and NCLEX Marks, the Domain Name is practically identical to the Complainant’s Marks considered collectively and confusingly similar to either the NCSBN or the NCLEX Marks considered separately. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the Complainant’s Marks or a mark similar to the Complainant’s Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. While the Respondent’s name is “NCLEX Office” this appears to be simply part of the Respondent’s attempt to impersonate the Complainant rather than a business name under which the Respondent operates. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. The Respondent uses the Domain Name to operate a website that clearly impersonates the Complainant through its use of the Complainant’s logo and copyright notice. It then offers both NCLEX preparation services in competition with the Complainant under the Complainant’s Marks and offers to assist customers to cheat on the NCLEX exams. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the Complainant’s Marks at the time the Domain Name was registered. The Respondent’s Website purports to offer services in direct competition with the Complainant and reproduces the Complainant’s logo. The registration of the Domain Name in awareness of the Complainant’s Marks and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent uses the Domain Name, being essentially identical to the Complainant’s Marks, to offer NCLEX preparation services in competition with the Complainant and also services that would allow visitors to commit fraud on the Complainant, through cheating on the Complainant’s NCLEX exams. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainant and the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name, Nicholas Smith
Sole Panelist
Date: January 14, 2021
Full & Egal Universal Law Academy