WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Council of State Boards of Nursing, Inc. v. Registration Private, Domains By Proxy, LLC / NCLEX Office
Case No. D2021-0922
1. The Parties
The Complainant is National Council of State Boards of Nursing, Inc., United States of America, represented by Vedder Price P. C., United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / NCLEX Office, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <ncsbnnclex.info> (hereafter referred to as the “Disputed Domain Name”) 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 26, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 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 April 1, 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 April 2, 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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 12, 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, National Council of State Boards of Nursing, Inc., is an independent not-for-profit organization through which nursing regulatory bodies act and counsel together on matters of common interest and concern affecting public health, safety and welfare, including the development of nursing licensure examinations in the United States of America (“U.S.”). The Complainant was established in 1978 and has been conducting nurse licensure exams known by the name NCLEX since the 1980s.
The Complainant holds numerous registered trademarks including the following:
- NCSBN, U.S. word mark No. 2944863, registered since April 26, 2005 in classes 16 and 41 with a first use in commerce since 1980;
- NCSBN LEADING REGULATORY EXCELLENCE, European Union (“EU”) Trade Mark No. 018020139 registered since July 31, 2019 in classes 9, 16, 41, 42 and 44, as depicted below:
- NCLEX, U.S. word mark No. 2078246, registered since July 15, 1997 in class 41 with a first use in commerce since November 1981;
- NCLEX-RN, EU word mark No. 018022189, registered since July 20, 2019 in classes 16 and 41;
- NCLEX-PN, EU word mark No. 018022187, registered since July 20, 2019 in classes 16 and 41.
The Disputed Domain Name was registered on November 10, 2020 and appears to refer to a website offering NCLEX licenses.
5. Parties’ Contentions
The Complainant considers the Disputed Domain Name to be identical or confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered and uses the Disputed Domain Name to intentionally attract internet users for commercial gain by creating confusion with the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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 Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s NCSBN and NCLEX trademarks have been registered and are being used in various countries in connection to the Complainant’s nursing regulatory activities, licensures and examinations.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademarks to assess whether the marks are recognizable within the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Disputed Domain Name combines both NCSBN and NCLEX trademarks of the Complainant in their entirety. The Panel finds that both trademarks are recognizable within the Disputed Domain Name.
Additionally, it is well-established that the generic Top-Level Domain (“gTLD”), here “.info”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights (see section 1.11 of the WIPO Overview 3.0).
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s NCSBN and NCLEX trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
According to the information provided by the Registrar, the Respondent is “NCLEX Office”. However, the Panel notes that the Respondent does not seem to have acquired trademark or service mark rights related to the use of the term “NCLEX”, and does not provide any (legitimate) reason for the use of this term. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). As mentioned under section A above, the Disputed Domain Name combines two different trademarks of the Complainant. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
The Panel observes that the website linked to the Disputed Domain Name appears to offer assistance to obtain NCLEX licenses. The website linked to the Disputed Domain Name includes numerous references to the Complainant and its NCSBN, NCLEX, NCLEX-RN and NCLEX-PN trademarks, including the exact figurative trademark depicted under the “Factual Background” section above. Information on the website includes a claim to be affiliated to the Complainant: “By virtue of the fact that we are affiliated to the NCSBN AND Pearson-Vue, All our licenses/certififcates [sic] are authentic, original and NCSBN certified.” The website even includes a copyright notice referring to the Complainant at the bottom of the homepage. In the Panel’s view, these clear references to the Complainant and its various trademarks indicate that the Respondent intends to impersonate the Complainant and attempts to mislead consumers into thinking that the NCLEX licenses purportedly offered on the website linked to the Disputed Domain Name originate from the Complainant. The Panel finds that such use demonstrates neither a bona fide offering of services nor a legitimate interest of the Respondent.
Moreover, the Panel observes that the website linked to the Disputed Domain Name suggests illegal ways to obtain a NCLEX license: “Get NCLEX licenses/certificates without taking the exams: We offer our exclusive clients the ability to get NCLEX licenses/certificates without taking the exams. The exams are taken for our clients by writers who are paid to do it using the names of our clients. Because the business is sensitive, very little information is provided to the public and details of the licenses/certificates are only provided to paying clients. Our organisation is well connected with various invigilators and test centers to allow our writers to take the exams on your behalf. We also create ID cards with the names of our clients to allow the writers do the exam without problems.” UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview 3.0).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name combines two different trademarks of the Complainant without any addition. Moreover, the website linked to the Disputed Domain Name includes numerous references to the Complainant and its trademarks, including the exact figurative trademark depicted under the “Factual Background” section above. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
The Respondent has been using the Disputed Domain Name incorporating the Complainant’s trademarks to offer (potentially illegal) assistance in obtaining licenses granted by the Complainant, falsely claiming to be affiliated with the Complainant. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark (see section 3.1.4 of the WIPO Overview 3.0).
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 <ncsbnnclex.info> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: May 26, 2021