Designer Skin LLC v. S & L Vitamins, Inc., et al.
Experian Information Solutions, Inc. v. Credit Research, Inc.
Case No. D2002-0095 (WIPO, May 7, 2002)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel held that an alleged authorized reseller of Complainant's products cannot use Complainant's trademarks in the domain name of a web site at which it sells the products of both Complainant and its competitors.
Complainant, Experian Information Solutions, Inc. ("Experian") is a United States credit reporting agency that owns the federal trademark in the mark "Experian." Complainant uses this mark in connection with its business operations, including in the domain name of a web site it operates at experian.com.
Respondent Credit Research Inc. ("Credit Research") was at one time an authorized reseller of Experian credit reports. Credit Research offered for sale "triple merge" credit reports, which combined information about the subject consumer from the three major credit reporting agencies - Experian, Trans Union and Equifax. To further its business activities, Credit Research registered the domain names experiancredit.com, experiancredit.net and experiancredit.org, at which it offered for sale these "triple merge" credit reports.
After Credit Research refused to transfer these domains to Experian on its demand, Experian attempted to terminate Credit Research's rights as an authorized reseller. As of the date of the Panel's decision, Credit Research's status was the subject of pending litigation between the parties.
Experian instituted this domain name dispute to compel Credit Research to transfer the domain names at issue to Experian. Finding Experian's claims meritorious, the Panel directed the requested transfer.
To be entitled to relief under the UDRP, the Complainant must show that the domain name at issue is identical or confusingly similar to Complainant's mark, that the Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and is using the domain name in bad faith.
The Panel found that the domain names at issue, experiancredit.com, .org and .net, were confusingly similar to Complainant's "Experian" mark, which they incorporated in its entirety. The addition of the word "credit" in these domain names did not alter this result. Said the Panel: "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."
The Panel further found that, despite Credit Research's claimed rights as an authorized reseller, it did not have a "legitimate interest" in the domain name sufficient to defeat Experian's UDRP claim. The court adopted and applied the four part test enunciated by the Panel in Oki Data v. ASD, WIPO Case No. D2001-0903 (2001) for determining when an authorized reseller has such a legitimate interest in a domain name containing the mark of the product it resells. Under that test, the reseller must be reselling Complainant's goods and services, and only Complainant's good and services, at the domain name at issue; must accurately disclose respondent reseller's relationship with the mark holder; and must not try to "corner the market" on domain names containing the holder's mark.
The Panel held that by selling "triple merged" credit reports, containing data from both Experian and its competitors, Credit Research was selling the products of Experian's competitors at the domains at issue, which mandated a finding that it did not have a 'legitimate interest' in those domains. The Panel found further support for this determination in the fact that Credit Research had registered three domains containing Complainant's mark, which constituted an impermissible "cornering" of the domain market. The Panel did not, for the purpose of its decision, determine whether Credit Research was an authorized reseller, a matter, as stated above, then being litigated in the courts.
Finally, the Panel held that Credit Research had registered the domains in bad faith. The Panel based this determination largely on its finding that "respondent's illegitimate use of Complainant's marks in order to sell the product's of Complainant's creditors is a clear indication of bad faith." The Panel also relied on the fact that Respondent was using a confusingly similar name to intentionally divert Internet users to its web sites in lieu of those of Complainant for commercial gain.
Finding Experian entitled to relief under the UDRP, the Panel resolved this domain name dispute by directing the transfer of the domain names to Experian.