Complainant is National Council of State Boards of Nursing, Inc., United States of America (United States), represented by Vedder Price P. C., United States.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / sugar daddy, Cameroon.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 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 October 12, 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 October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on November 17, 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 a well-known independent Pennsylvania not-for-profit organization established in 1978. Nursing regulatory bodies act and counsel together through Complainant on matters of common interest and concern affecting public health, safety and welfare including the development of nursing licensure examinations in the United States.
Since October 1985, Complainant has been conducting nationwide licensure exams under the NCLEX and NCLEX-RN marks (“Complainant’s Marks”). Since 1997, Complainant has registered and continuously used Complainant’s Marks to identify its goods and services in the United States related to nurse licensure exams.
Since 1998, Complainant has registered and continuously used a variety of other trade marks including the wording “NCLEX” and “NCLEX-RN”. Complainant offers a variety of goods and services under Complainant’s Marks including various instruction sheets, educational booklets and printed test sheets, educational services and development and distribution of education materials in the field of nursing licensure and nursing examinations.
Complainant is the owner of the following United States registered marks:
Mark
Registration Number
Date of Registration
NCLEX PRACTICE EXAM
5888765
October 22, 2019
NCLEX-RN
2080449
July 22, 1997
NCLEX-PN
2080448
July 22, 1997
NCLEX
2078246
July 15, 1997
NCLEX
2078247
July 15, 1997
NCLEX-PN
2078245
July 15, 1997
NCLEX-RN
2046886
March 25, 1997
Complainant is also the owner of other registrations including in Australia, Canada, Switzerland, European Union, United Kingdom, and Norway.
According to the publicly available WhoIs the Domain Name was registered on January 2, 2021. The disputed domain name resolves to a website describing Respondent’s services offered in connection with exam preparation and licensing services.
5. Parties’ Contentions A. ComplainantComplainant argues that the Domain Name is virtually identical or confusingly similar to Complainant’s Marks as it fully incorporates Complainant’s Marks with the addition of generic wording.
Complainant states that Respondent has no right or legitimate interests in respect of the Domain Name, nor has Complainant given Respondent authority to use Complainant’s Marks or any variation thereof.
Finally, Complainant argues that the Domain Name has been registered and is being used in bad faith as Respondent has registered the Domain Name primarily for the purpose of disrupting the business of Complainant. Complainant contends that Respondent offers exam preparation and licensing services through the Domain Name and is trading off Complainant’s goodwill in Complainant’s Marks.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe uncontested evidence is that Complainant is a well-known not-for-profit organization based in Pennsylvania. It operates in the public health, safety and welfare sectors and has a particular focus on the development of nursing licensure examinations in the United States. Since 1985, it has conducted the nursing licensure part of its activities under Complainant’s Marks. Complainant has registered its marks in a number of countries, including the United States.
The Domain Name is identical or otherwise very similar to both the NCLEX and NCLEX-RN marks, comprising as they do, Complainant’s Marks. Complainant rightly submits that the Domain Name fully incorporates Complainant’s Marks.
The first ground under the Policy is clearly made out.
B. Rights or Legitimate InterestsComplainant submits that Respondent lacks rights or legitimate interests in the Domain Name, as Complainant has not given Respondent authority to use Complainant’s Marks or any variation thereof. Further, Complainant asserts that Respondent offers exam preparation and licensing services through the Domain Name, and in doing so, it is trading off Complainant’s goodwill in Complainant’s Marks.
In analysing this submission, as a starting point, Respondent has registered a domain name which contains Complainant’s Marks, either in large part or in their entirety. This raises a prima facie case against Respondent. In the absence of any permission or authorisation from Complainant to use Complainant’s Marks, along with Respondent’s failure to respond to Complainant’s allegations, the Panel concludes that the use of the Domain Name by Respondent is likely to result in consumers being confused into believing that the Domain Name is connected to Complainant in some way. Respondent has not challenged Complainant’s allegation that it is offering exam preparation and licensing services through the Domain Name. Accordingly, the Panel finds that this conduct is likely to mislead or deceive consumers into believing they are accessing Complainant’s website, contrary to the fact.
Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithComplainant submits that Respondent has improperly registered the Domain Name primarily for the purpose of disrupting the business of Complainant. The Panel is unclear as to the basis upon which Complainant makes that submission and it is not accepted. Notwithstanding that, given Complainant’s long-standing use of Complainant’s Marks and the fact that the parties are engaged in the same area of activity, it is difficult to postulate a basis upon which Respondent’s registration and use of the Domain Name would not be in bad faith. Instead, the Panel infers that Complainant’s Marks are so closely linked and associated with Complainant that Respondent’s use of Complainant’s Marks, or a relatively minor variation of them, implies bad faith.
Complainant has therefore established the third ground under the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Clive L. Elliott Q.C.
Sole Panelist
Date: December 1, 2021