WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Experian Information Solutions, Inc. v. Credit Research, Inc.
Case No. D2002-0095
1. The Parties
Complainant is Experian Information Solutions, Inc., a Delaware corporation with its principal place of business in Orange, California, United States of America. Complainant is represented by Jones, Day, Reavis & Pogue in Los Angeles, California, United States of America.
Respondent is Credit Research, Inc., a California corporation, United States of America. Respondent appears pro se.
2. The Domain Names and Registrar
The domain names at issue are <experiancredit.com>, <experiancredit.net> and <experiancredit.org> (the "Domain Names"). The Domain Names were registered with TierraNet, Inc. d/b/a/ DomainDiscover.com (the "Registrar") on April 14, 1999 (<experiancredit.com> and <experiancredit.net>) and April 15, 1999 (<experiancredit.org>).
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on January 29, 2002 and in hardcopy on February 1, 2002. On February 6, 2002, after verifying the registration of the Domain Names with the Registrar, the Center requested that Complainant amend its Complaint in order to identify the correct Registrar. An Amended Complaint ("First Amended Complaint") was received by the Center by e-mail on February 18, 2002 and in hardcopy on February 22, 2002. In addition to correcting the Registrar, Complainant also made several substantive changes to its allegations. Since the First Amended Complaint was received by the Center before Respondent was given formal notice of this proceeding, Respondent was not prejudiced by any of the alterations, and the Panel will consider Complainantís contentions as expressed in the First Amended Complaint.
After confirming that the First Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"), the Center notified Respondent of the commencement of this proceeding on February 25, 2002.
Respondent was advised that a Response to the First Amended Complaint was required within 20 calendar days, or March 17, 2002. On March 14, 2002, Respondent contacted the Center and Complainant via e-mail in order to request a further amendment to the Complaint. Respondent alleged that the First Amended Complaint incorrectly listed Clarence Mortensen as the respondent, that the "true registrant of record" was Credit Research, Inc. and that the "published registrant" was Cliff Mortensen. In light of the Registrarís February 5, 2002 verification that Clarence Mortensen was the registrant, the Center declined to order the requested amendment. Respondent submitted a Response, which was received by the Center by e-mail on March 15, 2002 and in hardcopy on March 18, 2002.
On March 15, 2002, however, the Center received an e-mail from the Registrar noting that the original verification was incorrect. Apparently, after the filing of the Complaint but before the Registrar locked the files for the Domain Names so as to prevent their transfer during the pendency of this proceeding, see Policy paragraph 8, Mr. Mortensen, the original registrant, transferred the registration to Credit Research, Inc., a company that appears to be controlled by or affiliated with Mr. Mortensen. Accordingly, the Registrar informed the Center that, as of March 15, 2002, the "registrant of record" was Credit Research, Inc. and the "published registrant" was Cliff Mortensen. On the basis of this information, the Center requested a further amendment to the First Amended Complaint on March 19, 2002. Complainant submitted an amended complaint ("Second Amended Complaint"), which was received by the Center by e-mail on March 20, 2002 and in hardcopy on March 21, 2002. As far as the Panel can tell, the only difference between the First and Second Amended Complaints is the identification of the Registrant and Respondent.
Due to the submission of the Second Amended Complaint, Respondent requested an additional 20 days to submit an amended response. The Center denied this request on March 20, 2002, but informed Respondent that it would refer the matter to the Panel.
On April 19, 2002, after clearing for potential conflicts, the Center appointed Michael A. Albert and M. Scott Donahey as Panelists and David H. Bernstein as Presiding Panelist. Thereafter, the Panel considered Respondentís request for leave to file an Amended Response. Because the Second Amended Complaint did not alter the substance of the First Amended Complaint, because Respondent had a full 20 days to respond to the First Amended Complaint, because the Second Amended Complaint was filed at Respondentís request, and because Respondent has not indicated how the Amended Response would differ from the Response already in the record and why such an additional submission would be appropriate given the teachings of prior decisions, see, e.g., Magnum Piering Inc., v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001), the Panel denies Respondentís request for leave to amend its response.
Complainant is a United States credit-reporting agency. It existed for 24 years as a division of TRW Information Systems before changing its name to Experian and merging with CCN Group in 1996. Since that time, Complainant has operated a web site at <www.experian.com>.
Complainant has submitted printouts from the U.S. Patent and Trademark Officeís Internet-based Trademark Electronic Search System indicating that it is the current owner of several United States Trademark Registrations for the following trade and service marks:
-EXPERIAN, Reg. No. 2,260,187, Registered July 13, 1999, First Use September 19, 1996, Goods and Services: Computer services, Consulting services in the field of computers for use in lending and insurance risk management and information related thereto.
-EXPERIAN, Reg. No. 2,263,923, Registered July 27, 1999, First Use September 19, 1996, Goods and Services: Information services.
-EXPERIAN, Reg. No. 2,240,086, Registered April 20, 1999, First Use May 1997, Goods and Services: Computer software for use in business applications.
-EXPERIAN, Reg. No. 2,231,322, Registered March 16, 1999, First Use September 19, 1996, Goods and Services: Financial credit information provided by electronic means.
-EXPERIAN (and design), Reg. No. 2,333,477, Registered March 21, 2000, First Use September 19, 1996, Goods and Services: Information services.
-EXPERIAN (and design), Reg. No. 2,333,478, Registered March 21, 2000, First Use September 19, 1996, Goods and Services: Computer services, Consulting services in the field of computers for use in lending and insurance risk management and information related thereto.
-EXPERIAN (and design), Reg. No. 2,333,479, Registered March 21, 2000, First Use May 1997, Goods and Services: Computer software for use in business applications.
-EXPERIAN (and design), Reg. No. 2,333,480, Registered March 21, 2000, First Use September 19, 1996, Goods and Services: Financial credit information provided by electronic means.
-EXPERIAN PINPOINT SERVICES, Reg. No. 2,517,902, Registered December 11, 2001, First Use January 1999, Goods and Services: Information database management services.
Respondent registered the Domain Names with the Registrar on April 14 and April 15, 1999 and offered for sale "triple merge" credit reports through websites established at these Domain Names. Triple merge credit reports combine information regarding specific consumers from the three major national credit reporting agencies, Experian, Trans Union, and Equifax. It is undisputed that, at some point, Respondent was an authorized reseller of Experian credit reports. Although the parties disagree as to the details surrounding the dissolution of this business relationship, it is clear that Complainant terminated Respondentís access to its databases at some point in time. The circumstances surrounding this termination are the subject of several lawsuits between Complainant and Respondent.
In an e-mail dated July 14, 1999, Complainant, through its counsel, demanded that Respondent transfer the registration of the Domain Names.
5. Partiesí Contentions
Complainant alleges that the Domain Names are confusingly similar to its EXPERIAN trademarks because they incorporate the marks in their entirety, adding only a generic word that is descriptive of the service that Complainant and Respondent provide. In addition, Complainant states that the goods and services Respondent sells through its websites are identical or nearly identical to those sold by Complainant, and that Respondent uses the same distribution channel as Complainant (i.e., the Internet).
Complainant contends that Respondent lacks rights and legitimate interests with respect to the Domain Names. It alleges that Respondent has never been known by the Domain Names, nor is it making legitimate noncommercial or fair use of the Domain Names. Moreover, Complainant states that Respondent is not using the Domain Names in connection with the bona fide offering of goods and services because the unauthorized resale of Complainantís credit information cannot constitute the bona fide offering of services. Complainant alleges that Respondent clearly had knowledge of Complainantís marks, due to the fact that the marks are famous, that Respondent registered the Domain Names one month after Complainantís trademark registrations, and that Respondent engaged in reselling activities with respect to Complainantís products. Complainant also notes that Respondent has no affiliation with Complainant, nor does it have permission to use Complainantís marks.
Finally, Complainant alleges that Respondent registered and used the Domain Names in bad faith when it: (1) registered the Domain Names primarily for the purpose of disrupting Complainantís business, and (2) used the Domain Names to attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainantís marks as to the source, sponsorship, affiliation, or endorsement of its websites and the services offered at its websites. In support of these allegations, Complainant claims that Respondent created a likelihood of confusion by offering products on its websites similar to those offered by Complainant, by failing to provide a disclaimer, and by using Complainantís marks on the websites. In addition, Complainant points to Respondentís registration of multiple domain names incorporating Complainantís marks as well as the marks of other credit companies as proof of Respondentís bad faith registration and use of the Domain Names.
Respondent denies that the Domain Names are confusingly similar to Complainantís trademarks. It argues that the Domain Names differ from Complainantís marks because they add the word "credit" to "Experian" and they do not incorporate the "distinctive Experian mark, which is lower case with a distinctive accent mark over the Ďií." Respondent further denies the existence of any customer confusion by asserting that it has always sold credit products of Complainant, that both Complainant and Respondent use the same distribution channel, and that use of a domain name by re-sellers of a trademarked product is fair use.
Respondent claims that it has a legitimate interest in using the Domain Names because it has sold Complainantís products for 15 years, has invested $100,000 in promoting the Domain Names, and has used the Domain Names in commerce.
Respondent denies Complainantís allegation of bad faith registration and use. It claims that it was not attempting to prevent Complainant from reflecting its marks in a corresponding domain name given that Complainant already owns <experian.com> and that there are several other variations of "Experian" available for purchase. Respondent also alleges that Internet users visiting its sites are not likely to be confused because all credit report re-sellers use the Experian name and because Respondent does not use Complainantís marks in advertising. Finally, Respondent states that it uses the Domain Names for commercial purposes; it never intended to "sit" or "squat" on the Domain Names.
Finally, Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking under Paragraph 15(e) of the Rules.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
1. Similarity of the Marks and Domain Names
There is no doubt that the Domain Names are confusingly similar to Complainantís EXPERIAN marks for purposes of the Policy. They incorporate in their entirety the EXPERIAN marks, which are registered in the United States Patent and Trademark Office and thus are entitled to a presumption of validity. See EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000). Previous panels have held that, if a domain name incorporates a complainantís mark in its entirety, it is confusingly similar to that mark despite the addition of other words. See Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (September 12, 2000) ("credit" added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001) ("parts" added to mark OKIDATA in <okidataparts.com>).
The fact that Complainantís marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element. See Commerce LLC v. Charles M. Hatcher, File No. FA 105749 National Arbitration Forum (April 9, 2002) ("design elements of Complainantís mark cannot be captured in a domain name and thus are considered irrelevant for purposes of this analysis").
The Panel finds that Complainant has met its burden under Paragraph 4(a)(i) of the Policy.
2. Legitimacy of Respondentís Interest
Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Names by alleging that Respondent has never been known by the Domain Names, is not making legitimate noncommercial or fair use of the Domain Names, and is not using the Domain Names in connection with the bona fide offering of goods and services.
Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain names at issue, the burden of production shifts to the Respondent to come forward with proof of its legitimate interests in the domain names. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.D2000-0270, (June 6, 2000). According to Paragraph 4(c) of the Policy, Respondent may demonstrate its rights to or legitimate interests in the Domain Names by proving any of the following circumstances:
(i) before any notice to it of the dispute, its 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) it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is 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.
Respondent has not proffered any evidence that it has ever been known by the Domain Names. Nor has it is made noncommercial or fair use of the Domain Names without intent for commercial gain. Rather, Respondent admits that the Domain Names were used in "Internet commerce" in association with Respondentís credit reporting franchise.
Respondent does, however, make a plausible claim that it is using the Domain Names in connection with a bona fide offering of goods or services. Respondent clearly uses the Domain Names in connection with offering services, namely, the compilation of "triple merge" credit reports; the only issue is whether such an offering is "bona fide."
Previous panels have considered the issue of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001), the Panel surveyed the many cases in this area and articulated a standard for determining whether such activities constitute the bona fide offering of goods and services:
(1) Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001).
(2) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001); Kanao v. J.W. Roberts Co., CPR Case No. 0109 (July 25, 2001).
(3) The site must accurately disclose the registrantís relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (April 17, 2001); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001).
(4) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001).
In the current case, Respondentís conduct fails at least the second element of the above test: It is using domain names incorporating Complainantís marks in order to also sell the products of Complainantís competitors. Such a use cannot be considered bona fide, even if the "triple merge" credit reports sold by Respondent also incorporate Complainantís products to some degree.
The Panel declines to reach the question of whether Respondent is an authorized or unauthorized re-seller of Complainantís database, an issue hotly contested by the parties and, apparently, the subject of pending litigation between the parties. Even if Respondent were legally selling Complainantís products, it would not have the right to use Complainantís trademark in the domain name to sell products of Complainantís competitors, especially using a domain name that suggests that Complainant is the source of these "triple merge" reports, a violation of the third element of the Oki Data test.
Finally, Respondentís conduct also fails under the fourth element of the Oki Data test. By registering the Domain Names in three of the principal global top level domains, Respondent has gone well beyond any potential legitimate use and instead has cornered the market for use of this specific domain name.
3. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 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 it 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 web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on its web site or location.
Complainant argues that the last two circumstances are present in the current case. It alleges that Respondent registered the Domain Names primarily for the purpose of disrupting Complainantís business, and that it has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainantís EXPERIAN marks as to the source, sponsorship, affiliation, or endorsement of the "triple merge" credit reports sold at its websites.
The Panel agrees that Respondent is intentionally diverting Internet users to its websites by exploiting the confusing similarity between the Domain Names and Complainantís marks. Further, the Panel finds that the Respondent is engaging in this conduct in order to reap commercial gain. Respondentís illegitimate use of Complainantís marks in order to sell the products of Complainantís competitors is a clear indication of bad faith.
Respondent denies Complainantís allegations of bad faith by claiming, first, that all re-sellers of Complainantís credit products have always used Complainantís marks and, second, that it does not use Complainantís marks in advertising. Neither of these assertions refute the claim that Respondent intentionally diverted Internet customers to its websites. Nor does the disclaimer, added after commencement of this dispute, change this analysis. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000) (refusing to consider a disclaimer added after Respondentís receipt of the Complaint "because the appropriate behavior to consider is Respondentís behavior prior to its receipt of notice from the Complainant").
In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel finds that Complainant has established that (1) the Domain Names are identical or confusingly similar to Complainantís EXPERIAN trademarks; (2) Respondent has no rights or legitimate interests with respect to the Domain Names; and (3) the Domain Names have been registered and are being used in bad faith. Accordingly, the Panel grants Complainantís request that the domain names <experiancredit.com>, <experiancredit.net> and <experiancredit.org> be transferred.
David H. Bernstein
Michael A. Albert
M. Scott Donahey
Dated: May 7, 2002
1. According to Respondent, these lawsuits
are as follows: Credit Research, Inc. v. Experian Information Solutions, Inc.,
Case No. M47960 (Cal. Super. Ct. Dec. 14, 2001) (granting summary judgment to
Complainant); Credit Research, Inc. v. Fidelity National Credit, Case No. 242836
(Cal. Super. Ct.); Mortensen v. Birkenshaw (not yet filed).
Complainant alleges that, in January 2000, it learned that Respondent was using the Domain Names to sell credit reports directly to customers without Complainant's authorization and in violation of federal and state law. Complainant contends that, despite repeated warnings, Respondent continued the resale of these credit reports. Thereupon, in order to prevent illegal conduct and to protect itself from possible liability, Complainant terminated its relationship with Respondent and blocked Respondent's access to its databases.
2. Respondent disputes these allegations. Respondent alleges that it was a franchised reseller for Complainant. It contends that it informed Complainant of its registration of the Domain Names in May 1999, and that Complainant responded with a letter requesting the transfer of the Domain Names in July 1999. Respondent further argues that Complainant retaliated against Respondent's refusal to transfer the Domain Names, attempting to "destroy" Respondent's credit reporting business by illegitimately preventing access to the Experian database.
3. Complainant admits in its First Amended Complaint that Respondent added a disclaimer to the websites at <experiancredit.org> and <experiancredit.net> after receiving notice of the original Complaint.