WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consumers Union of United States, Inc. v. Hostmaster Hostmaster, consumption reporting authority
Case No. D2016-1636
1. The Parties
The Complainant is Consumers Union of United States, Inc. of New York, New York, United States of America (“United States”) represented by Cozen O’Connor, United States.
The Respondent is Hostmaster Hostmaster, consumption reporting authority of Gdynsk, Poland.
2. The Domain Name and Registrar
The disputed domain name <consumereport.org> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2016. On August 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2016, the Registrar 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 August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 9, 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 a non-profit organisation that reports on goods and services and conducts other activities in the interests of consumers generally. The Complainant holds various trademark registrations incorporating the words “consumer” and “reports” together, of which the following are representative for the purposes of the present proceeding:
CONSUMER REPORTS.ORG (and device), United States Patent and Trademark Office (“USPTO”), registered on July 15, 2003, registration number 2738364, class 42;
CONSUMERREPORTS.ORG, USPTO, registered on December 17, 2013, registration number 4451516, class 42;
CONSUMER REPORTS, USPTO, registered on January 20, 1959, registration number 672849, class 38.
The Complainant also owns trademarks for the words “consumer” and “reports” together in conjunction with other words, such as the trademark CONSUMER REPORTS ON HEALTH.
Nothing is known about the Respondent except for the contact details held by the Registrar of the disputed domain name, which was first registered on November 6, 1998.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical to the Complainant’s trademarks containing the words “Consumer Reports”. The disputed domain name differs from the trademarks only in the omission of one of the central overlapping letters “r”, and the word “report” being in the singular, and should therefore be found to be confusingly similar to the Complainant’s trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says no permission to use its trademarks, or to register any confusingly similar domain name, has been granted to the Respondent.
The Complainant says that in the terms of paragraph 4(c) of the Policy, the disputed domain name has not been used in connection with any bona fide offering of goods or services. The disputed domain name has variously been parked, has offered links to other websites, or has redirected to “www.kohls.com”. The Respondent has not been commonly known by the disputed domain name and has not used it for a legitimate noncommercial or fair purpose.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant says the disputed domain name has been used by the Respondent in order to generate revenue by offering sponsored links to visitors or by redirecting them to the website “www.kohls.com”. The Respondent is using the Complainant’s trademarks with minor misspellings in order to attract visitors by confusion between the Complainant’s trademarks and the disputed domain name.
The Complainant states that it has sent communications of complaint to the Respondent, without receiving any reply. The Complainant has submitted copies of emails of complaint addressed to the Registrar in which it is stated that communications to the Respondent have not been answered.
The Complainant has cited certain previous decisions under the Policy.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its ownership of registered trademarks incorporating the words “consumer” and “reports” together. The disputed domain name <consumereport.org>, including the generic Top-Level Domain (“gTLD”) designation “.org”, differs from the trademark CONSUMERREPORTS.ORG only by the omission of the letters “r” and “s”, and from the trademark CONSUMER REPORTS.ORG in essentially the same way, the space in the trademark being impermissible in a domain name. The gTLD “.org” may be disregarded in the determination of confusing similarity and the disputed domain name differs from the trademark CONSUMER REPORTS only by the omission of the letters “r” and “s”, and the space. The Panel finds the disputed domain name to be confusingly similar to trademarks in which the Complainant has rights under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has not been authorised to use the Complainant’s trademarks and does not have any rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The Complainant has produced screen capture evidence to the effect that the disputed domain name incorporating the Complainant’s trademark has been used with the intention of redirecting traffic to links or to the website “www.kohls.com”, for purposes that may reasonably be presumed to be revenue-earning and of commercial benefit to the Respondent. The Panel finds this activity not to constitute bona fide use of the disputed domain name by the Respondent in connection with an offering of goods or services.
According to the WhoIs for the disputed domain name, the registration details contain the line: “Registrant Organization: consumption reporting authority”. In the absence of any supporting evidence or of any submission from the Respondent, the Panel does not find that the Respondent has been commonly known by the disputed domain name or has used it for a legitimate noncommercial or fair purpose.
It is further noted that the disputed domain name was registered some 39 years after the registration of the trademark CONSUMER REPORTS.
The Panel finds on the evidence and on balance that the Respondent does not have rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides for a finding of bad faith by a respondent where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location”.
The Complainant has produced screen captures of two websites to which the disputed domain name has resolved. One is a pay-per-click parking page captured on August 11, 2016 on which are displayed six headings including “Car Insurance” and “Cars 2012”. The headings are described on the page by the hosting company as sponsored listings.
The other screen capture, undated, was made at a time when the disputed domain name was redirecting, leading to the website “www.kohls.com”. The screen capture showed that Kohl’s was clearly an online sales outlet for a wide variety of clothing. The website incorporated a “SHOP NOW” facility.
On the evidence, the Panel finds it more probable than not that the disputed domain name has been used for the commercial purpose of referring visitors to other websites with the intention of deriving commercial benefit for the Respondent, including a share of pay-per-click revenue and redirection or advertising fees. In order to refer visitors onward, the Respondent’s website must attract them, for which purpose it has used the disputed domain name containing predictable misspellings of the Complainant’s trademarks, a practice recognised as typopiracy or typosquatting. It is of no consequence that the visitors’ confusion may be dispelled upon arrival at the website to which the disputed domain name resolves, because the confusion has already occurred. The Panel finds the disputed domain name to have been used in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds on the evidence and on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <consumereport.org> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: September 16, 2016