WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dun & Bradstreet International, Ltd. v. James Edwards, NMR LTD

Case No. D2016-1307

1. The Parties

The Complainant is Dun & Bradstreet International, Ltd. of Berkeley Heights, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is James Edwards, NMR LTD of Buckinghamshire, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <dnbfinance.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2016. On June 28, 2016, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 28, 2016, GoDaddy.com, LLC 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 21, 2016. On July 22, 2016, the Center received an informal email from the Respondent consulting what he should do.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 27, 2016. 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 is an American company which activity consists in providing international and American business credit information and credit reports.

The Complainant developed a system to identify businesses numerically for data-processing, which is called the Data Universal Numbering System ("D-U-N-S") and is now a standard business identifier for the United Nations, the European Commission and the US Government.

The Complainant operates from its main website "www.dnb.com" and has localized sites for its various country locations.

The Complainant is the owner of numerous trademarks, including:

- With the United States Patent and Trademark Office, trademark No. 2340225 WWW.DNB.COM on April 11, 2000 in classes 35, 36 and 42 and duly renewed;

- With European Union Intellectual Property Office ("EUIPO"), trademark No.001116771 DNB on May 25, 2000 in classes 35, 36 and 42 and duly renewed;

- With the EUIPO, trademark No. 002063717 DNB on June 29, 2007 in classes 16, 35, 36 and 42 and duly renewed;

- With the EUIPO, trademark No. 005155197 DNBI on August 10, 2007 in class 38 and duly renewed;

- With the Tennessee Secretary of State's Office, trademark No. TN/E/2010/2704 DNB on November 29, 2011 in classes 35 and 36.

The disputed domain name <dnbfinance.com> was registered by the Respondent on May 4, 2016 with GoDaddy.com, LLC and currently directs to a page that informs Internet users that the service is unavailable.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark DNB in which the Complainant has rights.

The Complainant first states that the registrations of its trademarks precede the registration of the disputed domain name by the Respondent on May 4, 2016.

The Complainant then explains that its trademark DNB is the phonetic representation of "D&B", the ampersand often being pronounced as "an" rather than "and" in popular culture.

The Complainant also considers that the conjunction of the word "finance" to the Complainant's trademark DNB does not distinguish the disputed domain name from the Complainant's trademark since the term "finance" directly relates to the services which the Complainant provides.

The Complainant asserts that this addition of the term "finance" to the trademark DNB only reinforces the false association between the Respondent and the Complainant, adding that the Complainant also operates from the website "www.dnb.com".

The Complainant consequently considers that the use of the trademark on which the Complainant has rights with the word "finance" is enough to create initial interest confusion in the average Internet user's mind.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, the Complainant asserts that the Respondent has not been permitted, licensed or otherwise authorized by the Complainant to use its DNB trademark, nor is the Respondent affiliated with the Complainant.

The Complainant also highlights that its online searches revealed that the Respondent is in the business of metal recycling, which is wholly unrelated to the financial industry, and that nothing suggested that the Respondent was known by the disputed domain name.

The Complainant adds that a search on the most popular trademark databases did not produce any results for a registered trademark consisting of "DNBFINANCE" or "DNB FINANCE".

Moreover, the Complainant notes that the disputed domain name does not resolve to a webpage anymore but that the Respondent was previously using the disputed domain name to resolve to a website that was similar to the Complainant's website in order to execute a phishing scam, and that the Respondent took down the website once the Respondent was put on notice of the Complainant's rights.

Lastly, the Complainant considers that the Respondent registered and is using the disputed domain name in bad faith.

The Complainant contends that the registration of a domain name consisting of the word "finance" to the Complainant's DNB trademark clearly indicates that the Respondent registered the disputed domain name with the Complainant in mind in order to attract Internet traffic with the intention for commercial gain.

The Complainant also argues that the Respondent proceeded to launch a website similar to the Complainant's website and elaborated a phishing scheme, sending emails to the Complainant's customers using the email address "[ ]@dnbfinance.com" with the aim of requesting banking information from them.

The Complainant adds that the Respondent ensured that the website which the disputed domain name resolved to would appear to be legitimate if the client was to check it, due to the use of the Complainant's DNB trademark in order to pass it off as one of the Complainant's websites.

The Complainant highlights that this phishing scheme poses a great risk where financial institutes are concerned as they are entrusted with sensitive and confidential information, and insists on the immediate risk to the Complainant's brand and business.

The Complainant underlines its vigilance in reporting the disputed domain name, which is furthermore listed with antivirus companies as being a harmful site.

The Complainant adds that the fact that the Respondent is located a short distance away from the Complainant's UK head office confirms that the Respondent registered the disputed domain name with the Complainant in mind and a desire to target the Complainant's brand.

The Complainant finally recalls that the passive holding of a domain name with knowledge that the domain name infringes another party's trademark rights is evidence of bad faith registration and use, and argues that the Respondent's past use of the disputed domain name causes a great risk to the Complainant's brand and reputation should the disputed domain name be allowed to remain in the Respondent's hands.

The Complainant therefore requests the Panel to transfer the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions. However, the Respondent sent an email to the Center consulting what he should do after the Notification of Respondent Default.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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

According to the Policy's paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds that the Complainant has provided evidence that it has rights in the WWW.DNB.COM, DNB and DNBI trademarks.

The disputed domain name <dnbfinance.com> is composed of the distinctive element "dnb", which is the exact reproduction of the DNB trademark, and the generic term "finance" and the generic Top-Level Domain ("gTLD") ".com".

First of all, as pointed out by the Complainant, the gTLDs are generally not taken into account for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user's confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. Thus, it is the consensus view of UDRP panels that the inclusion of a subsidiary word to the dominant feature of the mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement (See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).

Regarding the disputed domain name <dnbfinance.com>, the Panel finds that the addition of the dictionary suffix "finance" to the DNB trademark is not sufficient to exclude confusing similarity, all the more that the term "finance" is directly related to the Complainant's activity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name must be considered confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

According to the Policy's paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to prior UDRP panel decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Policy's paragraph 4(c) outlines circumstances that if found by the panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to the Panel, the Complainant has made a prima facie showing that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its DNB trademark, and that the Respondent is not known by the disputed domain name.

The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent.

However, it turns out that the Respondent has not provided any answer to the Complainant's contentions.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy's paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy outlines non-exclusive circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.

First of all, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.

Moreover, the Panel notes that it has been established by the Complainant that some of its customers reported that the Respondent had elaborated a phishing scheme, consisting of sending emails to the Complainant's customers by using the email address "[ ]@dnbfinance.com" in order to request banking information from them.

Regarding the Annex E that is communicated by the Complainant, it appears that the Respondent passed itself off as the Complainant in those emails by having the Complainant's customers believe that the D-U-N-S Numbers of their companies were being renewed, and by signing "The Dun & Bradstreet business risk rating team".

The Panel also finds that the disputed domain name is not currently used since it now resolves to a webpage that indicates that the service is unavailable, but wishes to remind that such "passive holding" does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Furthermore, prior UDRP panel decisions considered that "The fact that the disputed domain name was routed to an inactive website after the Complaint was filed is further evidence of bad faith usage" (see, e.g., Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471), as it seems to be the case here.

Consequently, the Panel considers that the phishing scheme elaborated by the Respondent and which veracity has been established by the Complainant is sufficient to show that the Respondent has registered and is using the disputed domain name in bad faith by creating a likelihood of confusion with the Complainant's trademark in order to extract sensitive information from Internet users, as prior UDRP panel decisions stated that "The un-opposed allegation of phishing, and the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith" (see, e.g., Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc., WIPO Case No. D2014-0887; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135).

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

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 <dnbfinance.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: August 5, 2016