WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Nielsen Company (US), LLC. v. Registration Private, Domains By Proxy, LLC / Aniket Kharade

Case No. D2020-1898

1. The Parties

The Complainant is The Nielsen Company (US), LLC., United States of America (“United States”), represented by Baker & McKenzie, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Aniket Kharade, India, self‑represented.

2. The Domain Name and Registrar

The disputed domain name <nielsenreports.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 July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2020.

The Center verified that the Complaint together with the amended 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 July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. The Center received two informal email communications from the Respondent on August 4, 2020. On August 4, 2020, the Complainant replied to the Respondent’s email communications of August 4, 2020. The Center received a further informal email communication from the Respondent on August 8, 2020. On August 10, 2020, the Center sent an email communication to the Parties regarding possible settlement. On August 12, 2020, the Complainant replied to the Center, stating that it did not wish to pursue settlement, requesting that the proceeding be allowed to proceed to a decision. On August 12, 2020, the Center received an email communication from the Respondent, attaching a signed copy of the Center’s standard settlement form, consenting to the remedy requested by the Complainant. No further communications were received from either Party by the Center. On August 19, 2020, the Center informed the Parties that it would proceed to appoint the Administrative Panel.

The Center appointed Jane Seager as the sole panelist in this matter on August 24, 2020. 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

Founded in 1923, the Complainant is a publicly-traded United States corporation engaged in global measurement and data analytics. Its services include the provision of in-depth research, reports and analyses, and general consulting services to assist its customers with marketing and advertising strategies and provide insights into the markets in which they operate.

For use in connection with its data-analytics services, the Complainant has registered the trademark NIELSEN in various jurisdictions around the world, including:

- United States Trademark Registration No. 540915, NIELSEN, registered on April 10, 1951; and

- Indian Trade Mark No. 636285, NIELSEN, registered on August 8, 1994.

The Complainant is also the registrant of a number of domain names comprising its NIELSEN trademark under various generic Top-Level Domains (“gTLDs”), including <nielsen.com>, from which it operates its primary public-facing website, as well as under a number of country code Top-Level Domains (“ccTLDs”).

The disputed domain name was registered on February 17, 2019. At the time of filing the Complaint, the disputed domain name resolved to a website titled “NIELSEN REPORTS The world’s largest and most reliable market research database”, purporting to offer industry reports and consulting services (the “Respondent’s website”). The Respondent’s website included the copyright notice “© Copyright 2020 | Nielsen Reports (US), LLC”, and listed locations in Brazil, India, the United Kingdom, and the United States. At the time of this decision, the disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the NIELSEN trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark, in that it comprises the Complainant’s trademark in its entirety together with the term “reports”. The Complainant argues that the disputed domain name is confusingly similar in sound, appearance and commercial impression to the Complainant’s NIELSEN trademarks as well as the Complainant’s domain names.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant asserts that it has no relationship with the Respondent, nor is the Respondent licensed or otherwise authorized to make use of the Complainant’s trademarks. The Complainant argues that the overall look and feel of the Respondent’s website is meant to create the impression that it is somehow related to or affiliated with the Complainant, and notes that the Respondent uses identical fonts in the website’s header, together with the upper-case letter “N” on a blue rectangular background, similar to the lower-case letter “n” on a blue rectangular background – a branding element consistently used by the Complainant on its websites. The Complainant submits that the Respondent is using the disputed domain name to create a misleading impression of association with the Complainant for the purposes of the Respondent’s commercial gain, whereby the Respondent is trading on the reputation and goodwill of the Complainant and its NIELSEN trademarks to solicit orders for reports of consumer goods and other market analyses. The Complainant further submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the NIELSEN trademarks have achieved worldwide consumer recognition. The Complainant notes that the disputed domain name was registered some 60 years after the Complainant’s registration of its NIELSEN trademark in the United States, and years after the Complainant’s trademarks had gained worldwide consumer recognition, from which the Complainant infers that the Respondent had knowledge of the Complainant’s rights when he registered the disputed domain name. The Complainant asserts that the addresses listed on the Respondent’s website are false, and that the telephone number listed on the website does not connect. The Complainant submits that the Respondent is intentionally attempting to attract Internet users to his website for commercial gain through the misleading use of the Complainant’s NIELSEN trademarks, by replicating a similar look and feel of the Complainant’s website. In this regard, the Complainant asserts that when Internet users contact the Respondent via the email address listed on the Respondent’s website, the Respondent would then send an email soliciting business, listing the cost of reports to clients of the Complainant. The Complainant further asserts that the Respondent has attempted to mislead clients of the Complainant into paying for deliverables that were never received. The Complainant argues that the Respondent’s corporate name “The Nielsen Company (US), LLC” is false, and that it is intended to mislead Internet users into believing that the Respondent’s website is either the Complainant’s website, or that it is the website of an official partner of the Complainant, which it is not. The Complainant submits in an email communication from the Respondent, the Respondent indicated that he planned to auction the disputed domain name, from which the Complainant infers that the Respondent intended to profit from the sale of the disputed domain name to the Complainant or a competitor of the Complainant. The Complainant further asserts that further email communications from individuals apparently associated with the Respondent, misrepresentations were made about the Respondent’s business purportedly offered via the Respondent’s website, including that the Respondent had been in business for over 20 years, and that the Respondent has in the past worked together with the Complainant.

B. Respondent

The Respondent did not submit a formal Response to the Complaint. In a number of informal email communications, the Respondent indicated that he was willing to settle the dispute, and that he had taken down the website accordingly. The Respondent subsequently submitted a signed copy of the Center’s standard settlement form, consenting to the remedy requested by the Complainant.

6. Discussion and Findings

6.1. Preliminary Procedural Matter: Consent to Remedy

The Panel notes that the Respondent has agreed to transfer the disputed domain name to the Complainant. In reply, the Complainant claims that the Respondent’s willingness to settle this matter is disingenuous, in that the Respondent’s previous settlement communication consisted of an offer to sell the disputed domain name. Notwithstanding the Respondent’s consent to remedy, noting that the Complainant has expressly stated that it did not wish to settle this matter, and would like the proceeding to continue through to a decision, the Panel considers it appropriate to proceed to issue a decision on the merits; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10.

6.2. Substantive Matters

In order to prevail under the Policy, the Complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

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

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the NIELSEN trademark, the registration details of which are set out in the factual background section above.

The disputed domain name comprises the Complainant’s NIELSEN trademark in its entirety as its leading element, together with the descriptive term “reports” under the gTLD “.com”. The Panel finds that the inclusion of the term “reports” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain name; see WIPO Overview 3.0, section 1.8.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s NIELSEN trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the disputed domain name was previously used in connection with a website that purported to offer industry reports and consulting services. Comparing screen captures of the Complainant’s website alongside screen captures of the Respondent’s website, the Panel accepts the Complainant’s assertion that the Respondent has sought to create a misleading impression of association with the Complainant resulting from the similar look and feel of the Respondent’s website and the Complainant’s official website. In fact, in written correspondence with the Complainant, the Respondent has acknowledged that his website has caused consumer confusion, as he has received “many emails which are meant for the Nielsen Company (US), LLC”. The Panel finds that the Respondent has sought to trade off the goodwill and reputation associated with the Complainant’s trademark, by holding himself out as the Complainant, or as an official partner of the Complainant. Such misleading use does not amount to use of the disputed domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. Rather, prior UDRP panels have consistently held that the use of a domain name for the purposes of impersonation or passing off can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

The Respondent registered the disputed domain name using a privacy service, and the name of the underlying registrant, Aniket Kharade, bears no resemblance to the Complainant’s trademark whatsoever. The Respondent has not produced any evidence of registered trademark rights for “nielsen” or “nielsen reports”. The Respondent’s use of the disputed domain name to effectively impersonate the Complainant does not give rise to any legitimate claim of being commonly known by the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name or any name corresponding to the disputed domain name, pursuant to paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the disputed domain name is clearly intended to be commercial in nature. The Panel therefore finds that the Respondent has not used the disputed domain name for any legitimate noncommercial or fair use, as contemplated by paragraph 4(c)(iii) of the Policy.

The Respondent has not come forward with any evidence to otherwise support a claim of rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the Complainant was first established close to 100 years ago, and accepts the Complainant’s assertion that it has since become a world leader in the field of data analytics. The Complainant’s rights in the NIELSEN trademark substantially predate the Respondent’s registration of the disputed domain name. Moreover, it can be readily inferred, from the contents of the Respondent’s website, that the Respondent knew of the Complainant, and registered the disputed domain name in order to take unauthorized commercial advantage of the goodwill and reputation attached to the Complainant’s trademark. The Panel also notes that the Respondent has previously indicated that he intended to sell the disputed domain name at auction, from which the Panel infers that the Respondent registered the disputed domain name with a view to further capitalizing on the Complainant’s trademark, through sale of the disputed domain name to the Complainant or a third party. The Panel finds that the Respondent registered the disputed domain name in bad faith.

The Panel finds that by using the disputed domain name, as described above, the Respondent has attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods and services purportedly offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

In the circumstances, the Panel finds the Respondent’s registration of the disputed domain name using a privacy service to hide his identity, as well as the Respondent’s subsequent taking down of the website to which the disputed domain name resolved, after having been put on notice of this proceeding, to be further evidence of the Respondent’s bad faith.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <nielsenreports.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: September 11, 2020