WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dun & Bradstreet Corporation v. Newman Ventures LLC

Case No. D2010-1802

1. The Parties

Complainant is Dun & Bradstreet Corporation of Short Hills, New Jersey, United States of America represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Newman Ventures LLC, of Houston, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dunbradstreet.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 26, 2010, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2010.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on December 3, 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

Complainant is one of the world’s largest source of credit rating and financial analysis reporting, and operates in over 68 countries. The company was established in 1841, and became known as Dun & Bradstreet in 1933. Revenue for the last several years has been over USD 1.5 billion per year.

Complainant or its subsidiaries own United States federally registered marks for DUN & BRADSTREET, for credit rating, financial analysis reporting, and various related services. Most of these marks claim first use in 1933. Complainant also owns DUN & BRADSTREET marks registered worldwide.

Complainant owns the domain <dunandbradstreet.com>, which was created on May 13, 1997.

The disputed domain name <dunbradstreet.com> was registered on February 21, 2005. The domain name reverts to the website “www.premiervendor.com”, which contains links to other sites offering credit rating information and reports.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is known worldwide for its financial reporting services, which have been offered under the Dun & Bradstreet name since 1933, and that it holds various worldwide registrations for DUN & BRADSTREET marks. Thus, Complainant contends that it has rights in the mark, and that Respondent’s use of <dunbradstreet.com> to sell credit reporting goods and services is confusingly similar in that the disputed domain name incorporates Complainant’s mark in its entirety with the exception of the symbol “&”, which currently cannot be part of a domain name.

Complainant alleges that Respondent has no rights or legitimate interests in the mark, because Respondent is not licensed or authorized to use Complainant’s mark, and that Respondent is not making legitimate noncommercial use of the disputed domain name.

Complainant alleges that Respondent registered and uses the disputed domain name in bad faith. It alleges that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s registered marks, which were in use for 72 years prior to registration of the disputed domain name. Complainant further alleges that Respondent uses the disputed domain name for commercial gain by directing consumers to another website selling credit reporting services.

Complainant also alleges that Respondent has engaged in a pattern of such conduct and has registered other domain names that infringe on the rights of other well-known brands, and has been the subject of other UDRP decisions.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant clearly has demonstrated that it has rights in the DUN & BRADSTREET mark. Complainant is one of the world’s largest sources of credit rating and financial analysis reporting, and operates in over 68 countries. Complainant has been selling financial reporting services under the Dun & Bradstreet name since 1933.

The disputed domain name incorporates Complainant’s mark in its entirety with the exception of the symbol “&”, which currently cannot be part of a domain name. Several previous UDRP decisions have found that “an ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the domain names in dispute from being confusingly similar to the Complainant’s Marks.” At&T Corp. v WorldclassMedia.com, WIPO Case No. D2000-0553. See also Deloitte Touche Tohmatsu v. Robert Thorp, WIPO Case No. D2001-1431; Bang & Olufsen a/s v Unasi Inc., WIPO Case No. D2005-0728.

Furthermore, domain names that differ from a trademark by only minor variations have a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive, see Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441. In this Panel’s view, DUN & BRADSTREET is highly distinctive for credit and other financial reporting.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered mark, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in the domain name, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion.

Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the DUN & BRADSTREET mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.

Respondent is in default, has not provided any evidence in its own favor, and has thus not rebutted Complainant’s prima facie case.

The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant has sold credit and financial reporting products and services under its DUN & BRADSTREET mark for 77 years, and about 72 years before Respondent registered the disputed domain name. Complainant’s DUN & BRADSTREET registration was issued more than 35 years before the disputed domain name was registered. Complainant’s domain name <dunandbradstreet.com> also was registered prior to Respondent’s registration of the disputed domain name.

Based on these facts, this Panel infers that Respondent was or must have been aware of Complainant’s mark when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests”. Moreover, the use of a domain name confusingly similar to Complainant’s mark and selling the same product also supports an inference that Respondent knew of Complainant’s mark before Respondent registered the disputed domain name. The Panel is of the view that Respondent thus registered <dunbradstreet.com> in bad faith.

The disputed domain name resolves to the website “www.premiervendor.com”, which contains links to other sites for credit ratings and reports that directly compete with Complainant’s Dun & Bradstreet services. According to the publicly available WhoIs information, Respondent also owns the domain name <premiervendor.com>. This use is clearly commercial. Respondent’s use of the disputed domain name is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.

It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract to Respondent’s website Internet users looking for Dun & Bradstreet credit reports, thereby making commercial gain from click-through revenue from the sponsored links.

Complainant also alleges that Respondent, under the name Steven Newman and other aliases, has engaged in a pattern of conduct in registering domain names that infringe upon the rights of other well-known marks. Because there is enough evidence of other types of bad faith, it is unnecessary to this decision to try to determine the relationship between Respondent Newman Ventures LLC and the respondents named in other decisions for the purpose of finding a pattern of bad faith conduct.

This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.

7. Decision

For all 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 <dunbradstreet.com> be transferred to the Complainant.

Sandra A. Sellers
Sole Panelist
Date: December 17, 2010