ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION RELX Group PLC v. sio dsvi Case No. D2024-2799 1. The Parties The Complainant is RELX Group PLC, United Kingdom, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America (“United States”). The Respondent is sio dsvi, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2024. On July 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Domain Administrator, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 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 July 12, 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 July 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2024.
page 2 The Center appointed Archibald Findlay SC as the sole panelist in this matter on August 7, 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 The following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of challenge, can be accepted as background. The Complainant is a multinational information and analytics company, headquartered in London, employing over 36,000 employees and serving customers in more than 180 countries. The Complainant has a market capitalization of more than USD 86 billion and operates in four market segments: exhibitions; legal; risk and business analytics; and scientific, technical, and medical. The Complainant was rebranded as RELX in 2015 and, due to the success of the Complainant’s previous entities and its continuous and extensive global use of the trademark for the past nine years, the Complainant contends that the RELX trademark has become internationally well-known, accrued immeasurable goodwill in the marketplace and become clearly identified with the Complainant and its products and services. The RELX trademark has been registered by the Complainant in several jurisdictions, amongst which are: - International Trademark Registration No. 1262314 for RELX, registered on February 26, 2015, in classes 9, 16, 35, 36, 38, 39, 41, 42, 44, and 45; - United States Registration No. 5075594 for RELX, registered on November 8, 2016, in classes 9, 16, 35, 36, 38, 39, 41, 42, 44, and 45. The Complainant is also the owner of the domain name which hosts a webpage for employment opportunities with it at “www.relx.com/careers”. The disputed domain name was registered on June 24, 2024, and does not presently resolve to an active website. However, previously (in June 2023), the disputed domain name was purportedly used by the Respondent to offer employment with the Complainant via communications sent from an email address associated with the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant submits that it is the owner of registered trademarks for RELX and highlights the goodwill and recognition attained under the name RELX. It asserts that the disputed domain name is confusingly similar to the trademark or service marks owned by the Complainant. The Complainant avers that the Respondent lacks a right or legitimate interest in the disputed domain name and, to the best of the Complainant’s knowledge, the Respondent does not have any trademark rights to the term RELX. Neither has the Respondent received any license from the Complainant to use domain names featuring the RELX trademark. The Complainant submits that the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services but rather in connection with conducting illegal activities (purportedly issuing fraudulent employment offers from the Complainant without its
page 3 knowledge or consent in order to harvest sensitive information from unsuspecting victims), which cannot characterize a bona fide offering of goods and services under the Policy. Accordingly, the Complainant has set out, in detail, contentions supported by previous UDRP decisions as to why: (a) the disputed domain name is identical or confusingly similar to the trademark or service marks owned by the Complainant; (b) the Respondent has no rights or legitimate interests in respect of the domain name; and (c) the disputed domain name was registered and is being used in bad faith. The Complainant submits that it has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy and that the burden of production now shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. The Complainant further contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Substantive Elements of the Policy Paragraph 15(a) of the Rules requires that: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive. Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii). B. Effect of Default Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy. Such default does not,
page 4 per se, entitle a complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a requirement of the Rules (Allianz, Compaña de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response, particularly in the light of the fact that the Center wrote to the Respondent when dealing with procedural matters and advising the Respondent of time limits. From this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shop Intimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040; Knorr-Bremse AG. v. WhoisGuard Protected, WhoisGuard, Inc. / Mosco Binzu, WIPO Case No. D2019-0616). Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc, Supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, Supra; Standard Innovation Corporation v. Shopintimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., Supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213). C. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1 and the issue of “identical or confusingly similar” for the purposes of paragraph 4(a)(i) should be adjudicated upon by utilizing a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical […] or sufficiently approximates [the trademark]”. (See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.) The entirety of the mark is reproduced within the disputed domain name which is sufficient to establish that it is confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Société Des Produits Nestlé SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016;
page 5 LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-4146). 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 the word “careers” may bear on assessment of the second and third elements, the addition of the word “careers” 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. (Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 and particularly Carvana, LLC v. Domains By Proxy, LLC. / Fundacion Comercio Electronico, Carolina Rodrigues, WIPO Case No. D2022-1099). The generic top-level domain (“.com”) featured in the disputed domain name is viewed as a standard registration requirement and not an element that generally would be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066). Accordingly, the Panel finds the first element of the Policy has been established. D. 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. 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. (See also, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Co, Supra). Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established. The Complainant contends that it is the proprietor of the trademark RELX and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. Apart from there being no authorization on the part of the Complainant, there is no evidence of a relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360).
page 6 Panels have held that the use of a domain name for illegal activity, here impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. 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 (WIPO Overview 3.0, section 3.2.1) 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, namely: (i) circumstances indicating that [the respondent] has registered or [the respondent] 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] 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 trademark 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 again, Internet users to [the respondent’s] website or other on-line 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. As found by previous UDRP panels such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Bridgestone South Africa Holdings (Pty) Ltd v. Anthony Marcus, Auto Align and Tire CC, and Glen Martin, WIPO Case No. D2023-1359; as well as section 3.3 of the WIPO Overview 3.0, it has been concluded that the non-use of a domain name does not prevent a finding of bad faith. Generally, therefore, the non-use of a domain name is considered not to be a bona fide offering of goods or services. In this instance, it appears that the Respondent has deliberately registered the disputed domain name that is confusingly similar to the distinctive RELX marks. This name is not a phrase a trader would legitimately choose unless seeking to create an impression of association with the Complainant. The implication arising from the disputed domain name, in the mind of a would be employee, is therefore clearly that it is either of or in some way associated with the Complainant. In turn, in the view of the Panel, leads to the inescapable conclusion that such potential employee is invited to do business with either the Complainant itself or someone authorized on its behalf. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use. WIPO Overview 3.0, section 3.2.1. (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, Supra). The selection of a disputed domain name that is confusingly similar to the Complainant’s trademark and the Complainant’s domain name, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213),
page 7 particularly where it is so widely known globally. Moreover, such conduct by the Respondent implies that it intended to suggest to would be employees that it was in some way linked to or associated with the Complainant and thereby take advantage of the Complainant’s reputation and unsuspecting third parties. In particular, the disputed domain name was purportedly used by the Respondent to send deceptive emails, impersonating the Complainant’s employee to engage in a fraudulent employment offer scheme. Panels have held that the use of a domain name for illegal activity, here impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel is therefore satisfied that the Complainant has established the third element 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 disputed domain name be transferred to the Complainant. /Archibald Findlay/ Archibald Findlay Sole Panelist Date: August 14, 2024
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