WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dun & Bradstreet Corporation v. Private Whois Service
Case No. D2010-1805
1. The Parties
The Complainant is Dun & Bradstreet Corporation of Short Hills, New Jersey, the United States of America, represented by SafeNames Ltd., the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Private Whois Service of Nassau, Bahamas, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <dunnandbradstreet.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 27, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On October 28, 2010, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2010.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on November 24, 2010. 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 Complainant owns trade mark registrations relating to DUN AND BRADSTREET, inter alia the following: U.S. 852770 for Class 16, 05/12/1966; U.S. 852946 for Class 41, 05/12/1966; U.S. 853388 for Class 35, 05/12/1966; U.S. 1746071 for Class 36, 18/05/1992; Australia 356740 for Class 35, 18/02/1981; Australia 522416 for Class 36, 02/11/1989; U.K. 1148726 for Class 16, 13/02/1981; U.K. 1290762 for Class 35, 14/10/1986; U.K. 1422846 for Class 36, 20/04/1990; New Zealand 199009 for Classes 4, 36, 11/01/1990; New Zealand 199010 for Classes 4, 35, 11/01/1990; Community Trade Mark 847277 for Classes 16, 35, 36, 01/04/1996; and International 867933, for Classes 35, 36, 04/03/2005. The Complainant asserts its rights to all of the above registered trade marks, either through its subsidiaries or the Complainant company itself.
The Complainant has also registered a number of domain names: <dunandbradstreet.com>, <dunandbradstreet.co.uk>, and <dunandbradstreet.org>.
The disputed domain name was registered on August 4, 2004.
5. Parties’ Contentions
The Complainant, Dun and Bradstreet Corporation, asserts that it is the leading global source of business information and corporate risk analysis. It asserts that the name Dun & Bradstreet was first used in 1933 and has been in use ever since. The Complainant asserts revenues of USD 1.73 billion in 2008. The Complainant asserts that it is a well respected credit rating agency and has received many prizes and accolades for its business and is represented in various entries in Wikipedia. The Complainant asserts that it operates business information databases that are accessible to its clients around the world, containing 150 million individual business entries.
The Complainant contends that the disputed domain name is confusingly similar to both its name and its trade marks. The generic top level domain should be ignored for the purpose of comparison, as should the slightly different spelling in the disputed domain name, “dunn” instead of “dun”. The Complainant contends that its trade mark and the disputed domain name are virtually identical and are both aurally and visually very similar. The words used in the disputed domain name reinforce the connection between the disputed domain name and the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has shielded its identity. It has made no use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Complainant contends that no other entities have registered the name Dunn and Bradstreet. The Complainant’s mark is not a generic or descriptive term. The Respondent did not receive authorization or a license from the Complainant to register the disputed domain name and has no relationship of any kind with the Complainant. The Complainant is unaware of any legitimate rights or interests the Respondent could have. In fact, the manner in which the disputed domain name is used, i.e., for redirection to a pay-per-click parking page “www.creditbusiness.us”, establishes that the disputed domain name is not used for a bona fide offering of goods and services. This type of use as a portal to competitors of the Complainant cannot give rise to legitimate rights or interests. The Respondent has not used the disputed domain name for its own activities since registration in 2004. Therefore, the Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name.
The Complainant asserts that it has used its relevant trade marks consistently for 72 years prior to the registration of the disputed domain name. The failure of the Respondent to make use of the disputed domain name for six years since registration is a demonstration of bad faith. Instead, only a parking page has been used, and the site archive has been blocked by “robots.tx”. The Complainant contends that the disputed domain name was registered primarily to disrupt the Complainant’s business by diverting consumers away for commercial gain. The website associated with the disputed domain name leads to competitors. Using a parking page in this manner is contended to be a prima facie indication of bad faith. The Complainant also asserts that the Respondent has created a likelihood of confusion with the intention of attracting consumers to its website for commercial gain. The Complainant submits various estimations of the high commercial value of the disputed domain name on the basis of the page views it generates daily, as supplied by independent valuation websites. The value of the disputed domain name is asserted to be much higher than that of the website it redirects traffic to. As such, the Complainant asserts that the intention of the Respondent was to register and use the domain name to trade on its fame and make a commercial gain and also to tarnish the Complainant’s trade mark. The Complainant therefore contends that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trade mark Dun and Bradstreet (or “dunandbradstreet” as it would appear in a domain name). The only relevant difference lies in the spelling of “dunn”, which differs from Complainant’s spelling of “dun”. However, this is a trivial difference and has very little impact on the aural or visual features of the disputed domain name as compared with the Complainant’s mark. It is also a likely common misspelling by the average consumer, i.e., a considerable number of consumers would not be aware that Dun is spelled with one “n” in the Complainant’s trade mark, although they would be very well aware of that mark, the Complainant, and its well established business.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark.
B. Rights or Legitimate Interests
The Respondent has no authorization or license from the Complainant to use the mark DUN AND BRADSTREET or any permutation thereof, nor does it have permission to incorporate the mark in a domain name. It has not established that it is known under that name or has used that name legitimately in relation to any business or activity. It has not registered the name for any purpose. The terms Dun and Bradstreet are distinctive in that they have no inherent meaning or descriptive capacity and no generic significance or use.
The use of a domain name containing a complainant’s trade mark, without authorization, for the purpose of establishing and operating a pay-per-view parking page has been frequently held not to establish any rights or legitimate interests in the relevant sense.
As the Respondent is using the disputed domain name for a parking page, it is not making a legitimate noncommercial, nor a fair use of the disputed domain name. In fact, the Respondent’s use of the domain name is apt only to produce a commercial and financial gain for the Respondent through pay-per-view fees. Nothing in the use of the relevant domain name is connected with any business activity of the Respondent itself, or any other activity it conducts.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that the reputation of the Complainant was well established long before the domain name was registered. Its mark is well-known. The Complainant’s trade mark is a very specific, unusual and distinctive combination of two surnames; therefore, it is very unlikely that its registration is coincidental, nor does the mark have any inherent descriptive capacity or some meaning in another language. Further, the Respondent has not made any good faith use of the disputed domain name. Rather, it has used it as a parking page, relying on the minor misspelling to generate pay-per-view payments.
The use of a parking page in association with a domain name which is confusingly similar to a trade mark is an indication that the registrant intends to take advantage of the confusion or deception of consumers. The Respondent has had considerable time to develop its own use of the website associated with the disputed domain name, so it cannot be said that the parking page is a temporary or holding measure. In any case, there is no indication that the Respondent carries on any independent business at all or what that business, if any, might be. Also, there is no indication that the Respondent has any legitimate claim to the name Dunn and Bradstreet, or Dun and Bradstreet, or any permutation thereof.
Therefore, the Panel holds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <dunnandbradstreet.com> be transferred to the Complainant.
William A Van Caenegem
Dated: December 7, 2010