Complainant is National Council of State Boards of Nursing, Inc., United States of America (“United States” or “U.S.”), represented by Vedder Price P.C., United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Mohamad Younes, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2021, 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 Complainant on September 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 17, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 20, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 22, 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 BackgroundComplainant is an independent not-for-profit organization, founded in 1978, focused on nursing regulatory matters. Complainant’s services, which are provided throughout the United States and four of its territories, include developing and conducting nursing licensure examinations. Complainant has been conducting nursing licensure exams since at least October 1985 under the NCLEX mark, and has registered and used the NCLEX trademark in the United States since at least July 15, 1997. Complainant owns, or has owned in the past, numerous United States trademark registrations for the NCLEX mark or containing the term NCLEX, as follows:
- NCLEX PRACTICE EXAM, U.S. Reg. No. 5,888,765 (registered October 22, 2019 in class 41)
- NCLEX-RN, U.S. Reg. No. 2,080,449 (registered July 22, 1997 in class 41)
- NCLEX-PN, U.S. Reg. No. 2,080,448 (registered July 22, 1997 in class 41)
- NCLEX, U.S. Reg. No. 2,078,246 (registered July 15, 1997 in class 41)
- NCLEX, U.S. Reg. No. 2.078,247 (registered July 15, 1997 in class 16)
- NCLEX-PN, U.S. Reg. No. 2,078,245 (registered July 15, 1997 in class 16)
- NCLEX-RN, U.S. Reg. No. 2,046,886 (registered March 25, 1997 in class 16)
Complainant also owns numerous trademark applications and registrations for the NCLEX mark or containing the term NCLEX in international jurisdictions, as follows:
- NCLEX-RN, Australia Reg. No. 2016870 (registered June 18, 2019 in classes 16 and 41)
- NCLEX-PN, Australia Reg. No. 2016873 (registered June 18, 2019 in classes 16 and 41)
- NCLEX, Canada Reg. No. TMA958268 (registered December 16, 2016 in classes 16, 35 and 41)
- NCLEX-RN, Canada Reg. No. TMA958245 (registered December 16, 2016 in classes 16, 35 and 41)
- NCLEX-PN, Canada Reg. No. TMA958244 (registered December 16, 2016 in classes 16, 35 and 41)
- NCLEX PRACTICE EXAM, Canada App. No. 1930387 (filed November 15, 2018 in class 41)
- NCLEX-RN, Switzerland Reg. No. 733205 (registered July 4, 2019 in classes 16 and 41)
- NCLEX, Switzerland Reg. No. 733203 (registered July 4, 2019 in classes 16 and 41)
- NCLEX-PN, Switzerland Reg. No. 733204 (registered July 4, 2019 in classes 16 and 41)
- NCLEX-RN, European Union Reg. No. 018022189 (registered July 20, 2019 in classes 16 and 41)
- NCLEX-PN, European Union Reg. No. 018022187 (registered July 20, 2019 in classes 16 and 41)
- NCLEX, European Union Reg. No. 018022185 (registered July 20, 2019 in classes 16 and 41)
- NCLEX-RN, Great Britain Reg. No. UK00003374626 (registered May 3, 2019 in classes 16 and 41)
- NCLEX, Great Britain Reg. No. UK00003374613 (registered May 3, 2019 in classes 16 and 41)
- NCLEX-PN, Great Britain Reg. No. UK00003374622 (registered May 3, 2019 in classes 16 and 41)
- NCLEX-RN, Norway Reg. No. 304995 (registered July 31, 2019 in classes 16 and 41)
- NCLEX-PN, Norway Reg. No. 304994 (registered July 31, 2019 in classes 16 and 41)
- NCLEX, Norway Reg. No. 304993 (registered July 31, 2019 in classes 16 and 41)
The disputed domain name was registered on April 7, 2019. At the time the complaint was filed and currently the disputed domain name resolves to a website offering training programs to prepare students for the NCLEX exam.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is confusingly similar to Complainant’s NCLEX trademark in which Complainant has rights as demonstrated by its cited registrations. Complainant asserts that the addition of a term, specifically, “webinars,” to the dominant term “nclex”, does not eliminate the confusing similarity. Complainant contends that because both Complainant and Respondent provide exam preparation services, the overall impression is that the disputed domain name is associated with Complainant’s NCLEX trademark.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent’s use of the NCLEX trademark is unauthorized, and that Complainant has not granted Respondent permission to use the NCLEX trademark in any manner. Complainant asserts that Respondent is using a domain name that is confusingly similar to Complainant’s NCLEX trademark in a deliberate attempt to attract consumers and cause them to mistakenly believe that Respondent’s website is associated with Complainant. Complainant further contends that Respondent’s website makes false and misleading statements, most notably, that Respondent possesses “secrets to passing the NCLEX” (Complainant does not release “secrets” about the NCLEX to any third party) and that Respondent offers a “detailed NCLEX blueprint” directly from Complainant (Complainant does not provide test related information to service providers), generally implying that Respondent is associated with and endorsed by Complainant.
Complainant contends that Respondent deliberately registered a domain name fully incorporating Complainant’s NCLEX mark in order to make a false suggestion to the public that Respondent is associated with Complainant. Complainant asserts that Respondent’s registration of the disputed domain name demonstrates that Respondent was aware of Complainant’s NCLEX trademark at the time of registration of the disputed domain name. Complainant details how Respondent subsequently used the disputed domain name to provide content that creates further confusion for commercial gain and that falsely implies an affiliation with Complainant. Accordingly, complainant asserts that the disputed domain name was registered and used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(f) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340.
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns numerous trademark registrations for NCLEX in the United States and in other jurisdictions, as referenced above. Therefore, Complainant has established that it has rights in the NCLEX mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the NCLEX trademark in its entirety, with the addition of the word “webinars”. This variation does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,
WIPO Case No. D2017-0075.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its NCLEX mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 it has acquired no trade mark 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.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not affiliated with Complainant and that Respondent does not have permission from Complainant to use the NCLEX mark or the disputed domain name. However, although Respondent has not submitted any arguments or evidence in his defense, the Panel must still assess whether Complainant has met the burden of proof regarding whether Respondent has no rights or legitimate interests.
The Panel notes that Complainant is providing educational materials and services in the field of nursing licensure and nursing examinations. Respondent seems to be providing what could be considered as services competing with those of Complainant, or services of an accessory nature to the NCLEX exam. Noting the composition of the disputed domain name, which carries a risk of implied affiliation with Complainant, and its use, the Panel finds that the disputed domain name cannot give rise to rights or legitimate interests.
Furthermore, the panel does not find that Respondent is making a fair use of the NCLEX mark in connection with a bona fide offering of goods or services. Service providers may, under certain circumstances, have a legitimate right to or interest in making nominative use of a third-party trademark in a domain name to accurately describe the nature of goods or services offered through that domain name. Panelists use the Oki Data test (Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903) to determine whether a domain name makes such a nominative fair use, which requires that all of the following conditions be met (see WIPO Overview 3.0, Section 2.8.1):
(i) respondent must actually be offering the goods or services at issue;
(ii) respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
While the Panel notes that Respondent may not be seen as a reseller or distributor of Complainant’s products or services, the Panel considers Respondent may be providing services of an accessory nature to the NCLEX exam, and will refer to the Oki Data test by analogy. Respondent does actually offer webinars relating to preparation for the NCLEX exam, meeting condition (i), and offers only services relating to the NCLEX exam, meeting condition (ii). However, Respondent’s website does not disclose that there is no relationship between Respondent and Complainant, and, according to Complainant, Respondent falsely suggests that Complainant endorses, sponsors, provides, is affiliated with or is associated with Complainant’s services. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that his claims are false. Thus, the Panel must conclude that Respondent’s site fails to accurately and prominently disclose Respondent’s relationship (or lack thereof) with Complainant, and thus condition (iii) of the Oki Data test fails. As the Oki Data test requires meeting all four conditions, the Panel does not need to address condition (iv). The failure of condition (iii) is sufficient for the Panel to determine that Respondent’s offering through the disputed domain name is not bona fide.
Finally, the Panel does not find that Respondent is commonly known by the disputed domain name. A finding that a respondent is commonly known by a disputed domain name requires substantial proof and the mere incorporation of an entity with a corresponding trade name is not necessarily sufficient. See, e.g., NAOS v. Bioderm Medical Center,
WIPO Case No. DRO2020-0007. Complainant observes that Respondent appears to use the trade name “NCLEX Webinar LLC,” which is displayed in a footer on Respondent’s website. However, Respondent much more prominently trades under other names on his website and linked pages, most prominently his personal name Mohamad Youens. Thus, information on Respondent’s website, alone, does not prove that Respondent is commonly known as the disputed domain name. Respondent did not submit a Response and thus does not “produce concrete credible evidence” that he is known by the disputed domain name. See WIPO Overview 3.0, Section 2.3.
Complainant has demonstrated that Respondent is also likely using the disputed domain name to mislead Internet users for commercial gain, and again, Respondent has not filed a response to rebut Complainant’s assertion.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Panel finds that Respondent registered and used the disputed domain name in bad faith. Complainant provided evidence of its registration and widespread use of the NCLEX trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was very likely aware of Complainant and its rights in the NCLEX trademark when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,
WIPO Case No. D2016-1973. That the disputed domain name includes the term “webinars” when Complainant’s NCLEX trademark refers to a professional licensing examination, about which students may learn through test preparation materials provided by Complainant, is a further indication that Respondent was very likely aware of Complainant’s trademark.
Respondent is currently using the disputed domain name to offer test preparation services for the NCLEX examination, referring to Complainant’s NCLEX trademark and services. Respondent’s website fails to disclose that he is not affiliated with Complainant, and makes false claims regarding affiliation with and endorsement by Complainant. Accordingly, Respondent is using the disputed domain name for purposes of commercial gain through a deliberate attempt to mislead Internet users by creating an implication of an affiliation with Complainant. Prior UDRP panels have found that a respondent’s use of a disputed domain name that contains a complainant’s trademark for purposes of commercial gain, while misleading Internet users, constitutes bad faith. See Ebel International Limited v. Alan Brashear,
WIPO Case No. D2017-0001.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
7. DecisionFor 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,
Brian J. Winterfeldt
Sole Panelist
Date: November 4, 2021