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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consumer Reports, Inc. v. WhoisGuard, Inc. / Semalee Bilbrey

Case No. D2020-2989

1. The Parties

The Complainant is Consumer Reports, Inc., United States of America (“United States”), represented by Cozen O'Connor, United States.

The Respondent is WhoisGuard, Inc., Panama / Semalee Bilbrey, United States.

2. The Domain Names and Registrar

The disputed domain names <consumesreports.co> and <consumesreports.com> are registered with NameCheap, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 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 November 17, 2020 requesting to add two domain names and remove one domain name. On December 1, 2020, the Center transmitted by email to the Registrar a further request for registrar verification. On December 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 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 January 11, 2020 regarding the disputed domain names and requesting the removal of the domain names that the Complainant had requested be added on November 17, 2020.

The Center verified that the Complaint together with the amended Complaints 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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.

The Center appointed Evan D. Brown as the sole panelist in this matter on March 1, 2021. 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 consumer product testing and advocacy organization that publishes the print and digital family of Consumer Reports publications. It has used the mark CONSUMER REPORTS since at least as early as 1942. The Complainant owns a number of trademark registrations for the mark CONSUMER REPORTS, including United States Reg. No. 672,849, registered on January 20, 1959. The disputed domain names were registered on August 13, 2020. As evidenced in the Complaint, the Respondent has used the disputed domain names to publish websites consisting of what purport to be product reviews and ratings, being virtually identical copies of the Complainant’s website. Currently, the disputed domain name redirect to a website with porn content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark.

The Complainant undoubtedly has rights in the mark CONSUMER REPORTS, as evidenced by its trademark registration referred to above. The disputed domain names are confusingly similar to that mark, varying only by one letter.

Additionally, the content of the websites associated with the disputed domain names (namely, content essentially identical to that provided by the Complainant) confirms confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”), section 1.15 (“In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.”). Based on the content of the websites found at the disputed domain names, it appears, prima facie, that the Respondent sought to target the Complainant’s mark through the disputed domain names.

The Complainant has established this first element under the policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.

The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. Establishing websites that seek to imitate the Complainant’s publications do not constitute a bona fide offering of goods or services. Furthermore, the websites contain pay-per-click affiliate links and do not constitute legitimate noncommercial or fair use in these circumstances. The Respondent has not provided any evidence to overcome this prima facie showing, nor is there any other evidence in the record to tip the balance in the Respondent’s favor.

The current redirection of the disputed domain names to a pornographic website further supports a finding that the Respondent has no legitimate rights or legitimate interests to the disputed domain names.

The Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

The Panel finds, based on the available record, that the Respondent registered and is using the disputed domain names in bad faith. Registering the disputed domain names that target the Complainant’s mark, and establishing websites to imitate the Complainant is a clear example of bad faith registration and use under the Policy. Furthermore, the nature of the disputed domain names, comprising a typo of the Complainant’s widely-known mark, affirms the finding of bad faith registration and use in these circumstances.

The current redirection of the disputed domain names to a pornographic website further supports a finding that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant has established the third element under 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 names, <consumesreports.co> and <consumesreports.com>, be transferred to the Complainant.

Evan D. Brown
Sole Panelist
Date: March 16, 2021

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