ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Experian Information Solutions, Inc. v. Virtual Real Estate Limited Case No. D2024-2491 1. The Parties The Complainant is Experian Information Solutions, Inc., United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States. The Respondent is Virtual Real Estate Limited, Gibraltar, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2024. On June 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2024, 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 (redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 2024 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 June 25, 2024. 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 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2024. Aside from an informal communication on June 20, 2024, the Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on July 18, 2024.
page 2 The Center appointed Mihaela Maravela as the sole panelist in this matter on July 24, 2024. 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 According to information in the Complaint, the Complainant is one of the world’s largest information services companies and maintains operations throughout the United States and elsewhere. The Complainant is the holder of various trademarks for EXPERIAN, such as the United States Registration No. 2260187, registered as of July 13, 1999, in International Class 35, 36, 42. The Complainant uses its EXPERIAN trademark in connection with a wide variety of information, consumer credit, and insurance services. The Complainant has registered the domain name since 1996, which it uses to provide information about itself and its products, programs, and services, as well as for its employees’ email addresses, including for communications with vendors, customers, and other external third parties. The disputed domain name was registered on April 18, 2022, and is hosting a website featuring sponsored pay-per-click (“PPC”) advertisements for competing services. There is no information known on the Respondent apart from the details as they appear on the WhoIs record. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name merely adds the word “insurance” after the incorporation of the EXPERIAN trademark of the Complainant in its entirety and is therefore clearly similar to the Complainant’s EXPERIAN trademark that it is likely to cause (and plainly is intended to cause) confusion among members of the public and others. Also, the disputed domain name is confusingly similar to the Complainant’s domain name . As regards the second element, the Complainant argues that it has never authorized the Respondent to register or use the disputed domain name or the EXPERIAN trademark. The Respondent is using the disputed domain name to bring Internet users to a web page that purportedly offers insurance services and information to consumers. Also, the Respondent is not commonly known by the name EXPERIAN or any variation thereof. Therefore, the Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. With respect to the third element, the Complainant argues that the Complainant’s adoption and registration of its trademark EXPERIAN in the United States and elsewhere precedes the Respondent’s registration of the disputed domain name by more than two decades. Moreover, given the widespread publicity and fame of the EXPERIAN trademark throughout the world, and given the Respondent’s use of the disputed domain name in connection with insurance and other information services, it is indisputable that the Respondent had knowledge of the Complainant’s famous EXPERIAN trademark prior to the registration of the disputed domain name. The Complainant further submits that the Respondent registered the disputed domain name only five months after the Complainant acquired a third-party insurance company and began advertising and offering its own insurance-finding services, an acquisition which received widespread media coverage.
page 3 Further, the Complainant contends that upon being notified of the submission of the Complaint, an individual purporting to act for the Respondent, responded to the counsel for the Complainant offering to sell the disputed domain name for USD 5,000. The Respondent’s lack of use of the disputed domain name in connection with any bona fide offering of goods or services and direct offer to sell the disputed domain name for profit is precisely the kind of opportunistic cybersquatting that panels have held demonstrate significant bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In an informal communication of June 20, 2024, the Respondent asked “Are you willing to take over the domain for a small amount and we cancel this?” 6. Discussion and Findings No formal response has been received from the Respondent in this case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or 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. It is also the settled view of panels applying the Policy that the Top-Level Domain (“TLD”) (here “.com”) should be disregarded under the first element test. The Complainant has shown rights in respect of the trademark EXPERIAN for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, insurance) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the disputed domain name is used to host a parked page comprising PPC links to competing services. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this case, the PPC links are related to the Complainant’s services under the trademark EXPERIAN and generate search results with competing services to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests to the Respondent. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. Furthermore, the nature of the disputed domain name carries a high risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The Complainant’s registration and use of the relevant EXPERIAN trademarks predate the date at which the Respondent registered the disputed domain name. Given the distinctiveness of the Complainant’s trademark and the confusing similarity between the disputed domain name and the Complainant’s trademark, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks, and to target those trademarks. The disputed domain name is used by the Respondent to direct to a website displaying PPC advertisements related to the Complainant’s services. Given the confusing similarity between the EXPERIAN trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of EXPERIAN services.
page 5 Furthermore, the Respondent has approached the Complainant’s counsel after the filing of the Complaint, asking for USD 5,000 for selling the disputed domain name. This, in view of the finding that the Respondent has no rights to or legitimate interests in the disputed domain name, given also the distinctiveness of the Complainant’s trademark and the confusing similarity with the Complainant’s trademarks, as well as the failure of the Respondent to present a rationale for registering the disputed domain name appears to signal an intention on the part of the Respondent to derive commercial gain from the resale of the disputed domain name, riding on the reputation of the Complainant’s trademarks (this Panel accepts that the amount for which the disputed domain name has been offered for sale presumably exceeds, without evidence to the contrary, the Respondent’s out-of-pocket expenses in registering the disputed domain name). The circumstances referred to in paragraph 4(b)(i) of the Policy are applicable. Moreover, the Respondent has not submitted a formal response in these proceedings and has failed to rebut the Complainant’s contentions or to provide any evidence of actual or contemplated good-faith use. In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: August 2, 2024
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