Experian Information Solutions, Inc. v. Clarence Mortensen

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Experian Information Solutions, Inc. v. Credit Research, Inc.

Case No. D2002-0095

1. The Parties

Complainant is Experian Information Solutions, Inc., a Delaware corporation

with its principal place of business in Orange, California, United States of

America. Complainant is represented by Jones, Day, Reavis & Pogue in Los

Angeles, California, United States of America.

Respondent is Credit Research, Inc., a California corporation, United States

of America. Respondent appears pro se.

2. The Domain Names and Registrar

The domain names at issue are <experiancredit.com>, <experiancredit.net>

and <experiancredit.org> (the "Domain Names"). The Domain Names

were registered with TierraNet, Inc. d/b/a/ DomainDiscover.com (the "Registrar")

on April 14, 1999 (<experiancredit.com> and <experiancredit.net>)

and April 15, 1999 (<experiancredit.org>).

3. Procedural History

The Complaint was received by the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") by e-mail on January 29, 2002

and in hardcopy on February 1, 2002. On February 6, 2002,

after verifying the registration of the Domain Names with the Registrar, the

Center requested that Complainant amend its Complaint in order to identify the

correct Registrar. An Amended Complaint ("First Amended Complaint")

was received by the Center by e-mail on February 18, 2002 and in hardcopy

on February 22, 2002. In addition to correcting the Registrar, Complainant

also made several substantive changes to its allegations. Since the First Amended

Complaint was received by the Center before Respondent was given formal notice

of this proceeding, Respondent was not prejudiced by any of the alterations,

and the Panel will consider Complainant’s contentions as expressed in the First

Amended Complaint.

After confirming that the First Amended Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

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"), the Center notified Respondent of the

commencement of this proceeding on February 25, 2002.

Respondent was advised that a Response to the First Amended Complaint was required

within 20 calendar days, or March 17, 2002. On March 14, 2002,

Respondent contacted the Center and Complainant via e-mail in order to request

a further amendment to the Complaint. Respondent alleged that the First Amended

Complaint incorrectly listed Clarence Mortensen as the respondent, that the

"true registrant of record" was Credit Research, Inc. and that the

"published registrant" was Cliff Mortensen. In light of the Registrar’s

February 5, 2002 verification that Clarence Mortensen was the

registrant, the Center declined to order the requested amendment. Respondent

submitted a Response, which was received by the Center by e-mail on March 15, 2002

and in hardcopy on March 18, 2002.

On March 15, 2002, however, the Center received an e-mail from the Registrar

noting that the original verification was incorrect. Apparently, after the filing

of the Complaint but before the Registrar locked the files for the Domain Names

so as to prevent their transfer during the pendency of this proceeding, see

Policy paragraph 8, Mr. Mortensen, the original registrant, transferred

the registration to Credit Research, Inc., a company that appears to be

controlled by or affiliated with Mr. Mortensen. Accordingly, the Registrar

informed the Center that, as of March 15, 2002, the "registrant

of record" was Credit Research, Inc. and the "published registrant"

was Cliff Mortensen. On the basis of this information, the Center requested

a further amendment to the First Amended Complaint on March 19, 2002.

Complainant submitted an amended complaint ("Second Amended Complaint"),

which was received by the Center by e-mail on March 20, 2002 and in

hardcopy on March 21, 2002. As far as the Panel can tell, the only

difference between the First and Second Amended Complaints is the identification

of the Registrant and Respondent.

Due to the submission of the Second Amended Complaint, Respondent requested

an additional 20 days to submit an amended response. The Center denied this

request on March 20, 2002, but informed Respondent that it would refer

the matter to the Panel.

On April 19, 2002, after clearing for potential conflicts, the Center appointed

Michael A. Albert and M. Scott Donahey as Panelists and David H. Bernstein

as Presiding Panelist. Thereafter, the Panel considered Respondent’s request

for leave to file an Amended Response. Because the Second Amended Complaint

did not alter the substance of the First Amended Complaint, because Respondent

had a full 20 days to respond to the First Amended Complaint, because the Second

Amended Complaint was filed at Respondent’s request, and because Respondent

has not indicated how the Amended Response would differ from the Response already

in the record and why such an additional submission would be appropriate given

the teachings of prior decisions, see, e.g., Magnum Piering Inc., v. Mudjackers,

WIPO Case No. D2000-1525 (January 29, 2001),

the Panel denies Respondent’s request for leave to amend its response.

4.Factual Background

Complainant is a United States credit-reporting agency. It existed for 24 years

as a division of TRW Information Systems before changing its name to Experian

and merging with CCN Group in 1996. Since that time, Complainant has operated

a web site at <www.experian.com>.

Complainant has submitted printouts from the U.S. Patent and Trademark Office’s

Internet-based Trademark Electronic Search System indicating that it is the

current owner of several United States Trademark Registrations for the following

trade and service marks:

-EXPERIAN, Reg. No. 2,260,187, Registered July 13, 1999, First Use

September 19, 1996, Goods and Services: Computer services, Consulting

services in the field of computers for use in lending and insurance risk management

and information related thereto.

-EXPERIAN, Reg. No. 2,263,923, Registered July 27, 1999, First Use

September 19, 1996, Goods and Services: Information services.

-EXPERIAN, Reg. No. 2,240,086, Registered April 20, 1999, First Use

May 1997, Goods and Services: Computer software for use in business applications.

-EXPERIAN, Reg. No. 2,231,322, Registered March 16, 1999, First Use

September 19, 1996, Goods and Services: Financial credit information

provided by electronic means.

-EXPERIAN (and design), Reg. No. 2,333,477, Registered March 21, 2000,

First Use September 19, 1996, Goods and Services: Information services.

-EXPERIAN (and design), Reg. No. 2,333,478, Registered March 21, 2000,

First Use September 19, 1996, Goods and Services: Computer services,

Consulting services in the field of computers for use in lending and insurance

risk management and information related thereto.

-EXPERIAN (and design), Reg. No. 2,333,479, Registered March 21, 2000,

First Use May 1997, Goods and Services: Computer software for use in business

applications.

-EXPERIAN (and design), Reg. No. 2,333,480, Registered March 21, 2000,

First Use September 19, 1996, Goods and Services: Financial credit

information provided by electronic means.

-EXPERIAN PINPOINT SERVICES, Reg. No. 2,517,902, Registered December 11, 2001,

First Use January 1999, Goods and Services: Information database management

services.

Respondent registered the Domain Names with the Registrar on April 14 and April 15, 1999

and offered for sale "triple merge" credit reports through websites

established at these Domain Names. Triple merge credit reports combine information

regarding specific consumers from the three major national credit reporting

agencies, Experian, Trans Union, and Equifax. It is undisputed that, at some

point, Respondent was an authorized reseller of Experian credit reports. Although

the parties disagree as to the details surrounding the dissolution of this business

relationship, it is clear that Complainant terminated Respondent’s access to

its databases at some point in time. The circumstances surrounding this termination

are the subject of several lawsuits between Complainant and Respondent[1].

In an e-mail dated July 14, 1999, Complainant, through its counsel,

demanded that Respondent transfer the registration of the Domain Names.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the Domain Names are confusingly similar to its EXPERIAN

trademarks because they incorporate the marks in their entirety, adding only

a generic word that is descriptive of the service that Complainant and Respondent

provide. In addition, Complainant states that the goods and services Respondent

sells through its websites are identical or nearly identical to those sold by

Complainant, and that Respondent uses the same distribution channel as Complainant

(i.e., the Internet).

Complainant contends that Respondent lacks rights and legitimate interests

with respect to the Domain Names. It alleges that Respondent has never been

known by the Domain Names, nor is it making legitimate noncommercial or fair

use of the Domain Names. Moreover, Complainant states that Respondent is not

using the Domain Names in connection with the bona fide offering of goods and

services because the unauthorized resale of Complainant’s credit information

cannot constitute the bona fide offering of services[2].

Complainant alleges that Respondent clearly had knowledge of Complainant’s marks,

due to the fact that the marks are famous, that Respondent registered the Domain

Names one month after Complainant’s trademark registrations, and that Respondent

engaged in reselling activities with respect to Complainant’s products. Complainant

also notes that Respondent has no affiliation with Complainant, nor does it

have permission to use Complainant’s marks.

Finally, Complainant alleges that Respondent registered and used the Domain

Names in bad faith when it: (1) registered the Domain Names primarily for the

purpose of disrupting Complainant’s business, and (2) used the Domain Names

to attempt to attract, for commercial gain, Internet users to its websites by

creating a likelihood of confusion with Complainant’s marks as to the source,

sponsorship, affiliation, or endorsement of its websites and the services offered

at its websites. In support of these allegations, Complainant claims that Respondent

created a likelihood of confusion by offering products on its websites similar

to those offered by Complainant, by failing to provide a disclaimer[3],

and by using Complainant’s marks on the websites. In addition, Complainant points

to Respondent’s registration of multiple domain names incorporating Complainant’s

marks as well as the marks of other credit companies as proof of Respondent’s

bad faith registration and use of the Domain Names.

B. Respondent

Respondent denies that the Domain Names are confusingly similar to Complainant’s

trademarks. It argues that the Domain Names differ from Complainant’s marks

because they add the word "credit" to "Experian" and they

do not incorporate the "distinctive Experian mark, which is lower case

with a distinctive accent mark over the ‘i’." Respondent further denies

the existence of any customer confusion by asserting that it has always sold

credit products of Complainant, that both Complainant and Respondent use the

same distribution channel, and that use of a domain name by re-sellers of a

trademarked product is fair use.

Respondent claims that it has a legitimate interest in using the Domain Names

because it has sold Complainant’s products for 15 years, has invested $100,000

in promoting the Domain Names, and has used the Domain Names in commerce.

Respondent denies Complainant’s allegation of bad faith registration and use.

It claims that it was not attempting to prevent Complainant from reflecting

its marks in a corresponding domain name given that Complainant already owns

<experian.com> and that there are several other variations of "Experian"

available for purchase. Respondent also alleges that Internet users visiting

its sites are not likely to be confused because all credit report re-sellers

use the Experian name and because Respondent does not use Complainant’s marks

in advertising. Finally, Respondent states that it uses the Domain Names for

commercial purposes; it never intended to "sit" or "squat"

on the Domain Names.

Finally, Respondent requests that the Panel make a finding of Reverse Domain

Name Hijacking under Paragraph 15(e) of the Rules.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the

following three elements to obtain an order that a domain name should be cancelled

or transferred:

(1) the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

(2) the Respondent has no rights or legitimate interests with respect to the

domain name; and

(3) the domain name has been registered and is being used in bad faith.

1. Similarity of the Marks and Domain Names

There is no doubt that the Domain Names are confusingly similar to Complainant’s

EXPERIAN marks for purposes of the Policy. They incorporate in their entirety

the EXPERIAN marks, which are registered in the United States Patent and Trademark

Office and thus are entitled to a presumption of validity. See EAuto, L.L.C.

v. Triple S. Auto Parts, WIPO Case No.

D2000-0047 (March 24, 2000). Previous panels have held that, if

a domain name incorporates a complainant’s mark in its entirety, it is confusingly

similar to that mark despite the addition of other words. See Hang Seng Bank

Limited v. Websen Inc., WIPO Case No.

D2000-0651 (September 12, 2000) ("credit" added to mark

HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD,

Inc., WIPO Case No. D2001-0903 (November 6, 2001)

("parts" added to mark OKIDATA in <okidataparts.com>).

The fact that Complainant’s marks incorporate distinctive design elements is

irrelevant to this analysis. Since a domain name can only consist of alphanumeric

text, design elements are ignored when considering this element. See Commerce

LLC v. Charles M. Hatcher, File No. FA 105749 National Arbitration Forum

(April 9, 2002) ("design elements of Complainant’s mark cannot

be captured in a domain name and thus are considered irrelevant for purposes

of this analysis").

The Panel finds that Complainant has met its burden under Paragraph 4(a)(i)

of the Policy.

2. Legitimacy of Respondent’s Interest

Complainant has made a prima facie case that Respondent lacks rights

to or legitimate interests in the Domain Names by alleging that Respondent has

never been known by the Domain Names, is not making legitimate noncommercial

or fair use of the Domain Names, and is not using the Domain Names in connection

with the bona fide offering of goods and services.

Once a Complainant makes a prima facie showing that a Respondent lacks

rights to the domain names at issue, the burden of production shifts to the

Respondent to come forward with proof of its legitimate interests in the domain

names. Document Technologies, Inc. v. International Electronic Communications

Inc., WIPO Case No.D2000-0270, (June 6, 2000).

According to Paragraph 4(c) of the Policy, Respondent may demonstrate its rights

to or legitimate interests in the Domain Names by proving any of the following

circumstances:

(i) before any notice to it of the dispute, its 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) it (as an individual, business, or other organization) has been commonly

known by the domain name, even if it has acquired no trademark or service mark

rights; or

(iii) it is 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.

Respondent has not proffered any evidence that it has ever been known by the

Domain Names. Nor has it is made noncommercial or fair use of the Domain Names

without intent for commercial gain. Rather, Respondent admits that the Domain

Names were used in "Internet commerce" in association with Respondent’s

credit reporting franchise.

Respondent does, however, make a plausible claim that it is using the Domain

Names in connection with a bona fide offering of goods or services. Respondent

clearly uses the Domain Names in connection with offering services, namely,

the compilation of "triple merge" credit reports; the only issue is

whether such an offering is "bona fide."

Previous panels have considered the issue of whether an authorized sales or

service agent of trademarked goods can use the trademark at issue in its domain

name. In Oki Data Americas, Inc. v. ASD, Inc., WIPO

Case No. D2001-0903 (November 6, 2001), the Panel surveyed the

many cases in this area and articulated a standard for determining whether such

activities constitute the bona fide offering of goods and services:

(1) Respondent must actually be offering the goods or services at issue. E.g.,

World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,

WIPO Case No. D2000-1306 (January 24, 2001).

(2) Respondent must use the site to sell only the trademarked goods; otherwise,

it could be using the trademark to bait Internet users and then switch them

to other goods. Nikon, Inc. v. Technilab, WIPO

Case No. D2000-1774 (February 26, 2001); Kanao v. J.W. Roberts

Co., CPR Case No. 0109 (July 25, 2001).

(3) The site must accurately disclose the registrant’s relationship with the

trademark owner; it may not, for example, falsely suggest that it is the trademark

owner, or that the website is the official site, if, in fact, it is only one

of many sales agents. E.g., Houghton Mifflin Co. v. The Weatherman, Inc.,

WIPO Case No. D2001-0211 (April 17, 2001);

R.T. Quaife Engineering v. Luton, WIPO

Case No. D2000-1201 (November 14, 2000); Easy Heat, Inc. v.

Shelter Prods., WIPO Case No. D2001-0344

(June 14, 2001).

(4) The Respondent must not try to corner the market in all domain names, thus

depriving the trademark owner of reflecting its own mark in a domain name. Magnum

Piering, Inc. v. Mudjackers, WIPO Case

No. D2000-1525 (January 29, 2001).

In the current case, Respondent’s conduct fails at least the second element

of the above test: It is using domain names incorporating Complainant’s marks

in order to also sell the products of Complainant’s competitors. Such a use

cannot be considered bona fide, even if the "triple merge" credit

reports sold by Respondent also incorporate Complainant’s products to some degree.

The Panel declines to reach the question of whether Respondent is an authorized

or unauthorized re-seller of Complainant’s database, an issue hotly contested

by the parties and, apparently, the subject of pending litigation between the

parties. Even if Respondent were legally selling Complainant’s products, it

would not have the right to use Complainant’s trademark in the domain name to

sell products of Complainant’s competitors, especially using a domain name that

suggests that Complainant is the source of these "triple merge" reports,

a violation of the third element of the Oki Data test.

Finally, Respondent’s conduct also fails under the fourth element of the Oki

Data test. By registering the Domain Names in three of the principal global

top level domains, Respondent has gone well beyond any potential legitimate

use and instead has cornered the market for use of this specific domain name.

3. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances,

in particular but without limitation, shall be considered evidence of the registration

or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of documented out-of-pocket costs directly

related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the

owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to its 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 the Respondent’s

web site or location or of a product or service on its web site or location.

Complainant argues that the last two circumstances are present in the current

case. It alleges that Respondent registered the Domain Names primarily for the

purpose of disrupting Complainant’s business, and that it has intentionally

attempted to attract, for commercial gain, Internet users to its websites by

creating a likelihood of confusion with Complainant’s EXPERIAN marks as to the

source, sponsorship, affiliation, or endorsement of the "triple merge"

credit reports sold at its websites.

The Panel agrees that Respondent is intentionally diverting Internet users

to its websites by exploiting the confusing similarity between the Domain Names

and Complainant’s marks. Further, the Panel finds that the Respondent is engaging

in this conduct in order to reap commercial gain. Respondent’s illegitimate

use of Complainant’s marks in order to sell the products of Complainant’s competitors

is a clear indication of bad faith.

Respondent denies Complainant’s allegations of bad faith by claiming, first,

that all re-sellers of Complainant’s credit products have always used Complainant’s

marks and, second, that it does not use Complainant’s marks in advertising.

Neither of these assertions refute the claim that Respondent intentionally diverted

Internet customers to its websites. Nor does the disclaimer, added after commencement

of this dispute, change this analysis. See Universal City Studios, Inc. v.

G.A.B. Enterprises, WIPO Case No. D2000-0416

(June 29, 2000) (refusing to consider a disclaimer added after Respondent’s

receipt of the Complaint "because the appropriate behavior to consider

is Respondent’s behavior prior to its receipt of notice from the Complainant").

7. Decision

In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules,

the Panel finds that Complainant has established that (1) the Domain Names are

identical or confusingly similar to Complainant’s EXPERIAN trademarks; (2) Respondent

has no rights or legitimate interests with respect to the Domain Names; and

(3) the Domain Names have been registered and are being used in bad faith. Accordingly,

the Panel grants Complainant’s request that the domain names <experiancredit.com>,

<experiancredit.net> and <experiancredit.org> be transferred.

David H. Bernstein

Presiding Panelist

Michael A. Albert

Panelist

M. Scott Donahey

Panelist

Dated: May 7, 2002

1. According to Respondent, these lawsuits

are as follows: Credit Research, Inc. v. Experian Information Solutions, Inc.,

Case No. M47960 (Cal. Super. Ct. Dec. 14, 2001) (granting summary judgment to

Complainant); Credit Research, Inc. v. Fidelity National Credit, Case No. 242836

(Cal. Super. Ct.); Mortensen v. Birkenshaw (not yet filed).

Complainant alleges that, in January 2000, it learned that Respondent was using

the Domain Names to sell credit reports directly to customers without Complainant's

authorization and in violation of federal and state law. Complainant contends

that, despite repeated warnings, Respondent continued the resale of these credit

reports. Thereupon, in order to prevent illegal conduct and to protect itself

from possible liability, Complainant terminated its relationship with Respondent

and blocked Respondent's access to its databases.

2. Respondent disputes these allegations.

Respondent alleges that it was a franchised reseller for Complainant. It contends

that it informed Complainant of its registration of the Domain Names in May

1999, and that Complainant responded with a letter requesting the transfer of

the Domain Names in July 1999. Respondent further argues that Complainant retaliated

against Respondent's refusal to transfer the Domain Names, attempting to "destroy"

Respondent's credit reporting business by illegitimately preventing access to

the Experian database.

3. Complainant admits in its First Amended

Complaint that Respondent added a disclaimer to the websites at <experiancredit.org>

and <experiancredit.net> after receiving notice of the original Complaint.

More cases by this complainant

• Experian Information Solutions, Inc. — D2024-5138 · Terminated
• Experian Information Solutions, Inc. v. Virtual Real Estate Limited — D2024-2491 · experianinsurance.com · Transfer · 02 Aug 2024
• Experian Information Solutions, Inc. v. Drew Zelda — D2022-4982 · experianfx.com · Transfer · 06 Feb 2023
• Experian Information Solutions, Inc. v. Roland Lewis — D2022-3724 · securityexperianlab.com · Transfer · 10 Jan 2023
• Experian Information Solutions, Inc. — D2007-0243 · Terminated
• Experian Information Solutions, Inc. v. Jeonggon Seo — D2002-0368 · experian.net, experian.com · Transfer · 16 Sept 2002