WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consumer Reports, Inc. v. Domains By Proxy, LLC / Khorn Youra
Case No. D2021-0869
1. The Parties
The Complainant is Consumer Reports, Inc., United States of America (“United States” or “U.S.”), represented by Cozen O'Connor, United States.
The Respondent is Domains By Proxy, LLC, United States / Khorn Youra, Cambodia.
2. The Domain Name and Registrar
The disputed domain name <consumerreports.store> 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 March 22, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2021, 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 March 25, 2021, 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 March 30, 2021.
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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.
The Center appointed John Swinson as the sole panelist in this matter on April 27, 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 a family of CONSUMER REPORTS publications, in both digital and print format. The Complainant was formed in 1936. According to the Complaint, the Complainant has been using the CONSUMER REPORTS trademark continuously since at least 1942. The Complainant owns numerous trademark registrations for trademarks containing CONSUMER REPORTS including a United States trademark registration that was filed on January 13, 1958 for CONSUMER REPORTS (U.S. Reg. No. 672,849), and filed on April 29, 1994, a registration for CONSUMER REPORTS TV NEWS (U.S. Reg. No. 1,880,957).
The Respondent did not file a Response, so little is known about the Respondent.
The disputed domain name was registered on March 26, 2020.
The website at the disputed domain name redirects to a website at “www.the11reviews.com” which contains product reviews. This website is what is known as an affiliate website. It redirects traffic to “www.amazon.com” in return for the payment of commissions from Amazon.com.
5. Parties’ Contentions
The Complainant made the following submissions in the Complainant:
Identical or Confusingly Similar
The Complainant owns eight United States trademark registrations for CONSUMER REPORTS and similar trademarks. The Complainant has been using the CONSUMER REPORTS trademark since 1942.
The disputed domain name is virtually identical to the Complainant’s CONSUMER REPORTS family of registered trademarks in sight, sound, appearance, and commercial impression. The only difference between the Complainant’s registered trademark and the disputed domain name is the ".store" Top-Level Domain.
Rights or Legitimate Interests
The Respondent’s use of the disputed domain name has “no connection with a bona fide offering of goods and services”. While there is content on the Respondent’s website consisting of what purport to be product reviews and ratings, the Respondent’s offering cannot be considered bona fide because such use constitutes infringing use. The Respondent refers to itself as "Comsumerreports.store" throughout its website.
Notably, the disputed domain name now automatically redirects to a website at “www.the11reviews.com”.
This change was made after the Complainant sent cease and desist letters to the Respondent.
While the Respondent has used the disputed domain name for a website featuring product reviews, that alone is insufficient for a finding of legitimate interests. It appears that the Respondent uses the disputed domain name as a means of attracting users to its website where it offers product reviews of various consumer products in order to mimic the product reviews on the Complainant's website.
The Complainant has not given the Respondent permission to use its registered trademarks or any domain name confusingly similar to the Complainant's registered trademarks.
Upon information and belief, the Respondent has not been “commonly known by” the disputed domain name which has no relation to the Complainant.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers and/or tarnish the Complainant’s trademark rights. In fact, just the opposite is true – the Respondent is using the disputed domain name to intentionally pass itself off as the Complainant.
Registered and Used in Bad Faith
The Complainant relies on paragraphs 4(b)(iii) and (iv) of the Policy.
There can be no reasonable dispute that the Respondent registered the disputed domain name in bad faith because it is identical to the Complainant’s registered marks and the Respondent's website is an attempt to copy the legitimate consumer reviews that the Complainant has offered for almost 80 years.
The Respondent also refers to itself as "consumerreports.store" on its website. As a result, there can be no reasonable dispute that a substantial number of users of the Respondent’s site are likely to be confused about the source, sponsorship, affiliation or endorsement of the site.
Moreover, the evidence shows the Respondent operates its site for commercial gain. Specifically, the Respondent makes money when a user clicks a review on the Respondent’s websites and is sent directly to the Amazon.com website in order to purchase the product. The Respondent makes a commission on these sales as an Amazon Affiliate.
The Respondent deliberately selected CONSUMER REPORTS as the salient part of the disputed domain name knowing it was a reference to the Complainant, rather than a non-infringing alternative.
The Respondent is attempting to provide the same types of product reviews that the Complainant provided (albeit for profit).
There is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name and therefore, the disputed domain name was registered and is being used by the Respondent in bad faith.
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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has clearly proven ownership of numerous and long-standing registered trademarks for CONSUMER REPORTS in the United States.
The disputed domain name is identical to that trademark, disregarding the Top-Level Domain “.store”.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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 [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent is making a commercial use of the disputed domain name by redirecting the disputed domain name to a competing product review website where a fee is received from Amazon.com for such referrals.
The use of a complainant’s trademark to redirect users to a competing site does not support a claim by a respondent to rights or legitimate interests in the disputed domain name.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The disputed domain name diverts to a website at “www.the11reviews.com”, which contains product reviews and affiliate links to the Amazon.com store. One page on “www.the11reviews.com” website has the following statement:
“Amazon: Ultimate Guides & Product Reviews
Consumerreports.store is a website with full of up-to-date information, which can benefit you for daily life. At Consumerreports, we publish product reviews list, health advice as well as other useful information you want to know. Here at Consumerreports.store, we believe all readers on the internet deserve to read all the high-quality articles which really can solve their problem and need very fast. That’s why we keep providing only worth-reading and worth-sharing articles/tips/review on our website.”
This is strong evidence that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the “www.the11reviews.com” website by creating a likelihood of confusion with the Complainant’s long-standing trademark as to the source, sponsorship, affiliation, or endorsement of the “www.the11reviews.com” website. There is no plausible reason why the Respondent would use the disputed domain name in a textual description on the “www.the11reviews.com” website other than to confuse consumers.
Compare Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991, which also concerns misuse of a domain name by an Amazon affiliate.
Accordingly, the Complainant meets the requirements of paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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 <consumerreports.store> be transferred to the Complainant.
Date: May 6, 2021