WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Council of State Boards of Nursing, Inc. v. Whois Privacy, Private by Design, LLC / Brandon Asah

Case No. D2021-1394

1. The Parties

The Complainant is National Council of State Boards of Nursing, Inc., United States of America (“United States”), represented by Vedder Price P.C., United States.

The Respondent is Whois Privacy, Private by Design, LLC, United States / Brandon Asah, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <nclexrn-lpn.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 7, 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 May 11, 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 10, 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 a United States not-for-profit organisation, founded in 1978, concerned with many aspects of standards in the nursing profession. Among other activities it develops and provides nurse licensing examinations and associated training materials nationally under the name NCLEX, and has done so since at least as early as 1985. It also uses the acronym LPN to mean “licensed practical nurse”.

The acronym NCLEX, alone or in combination, has been the basis of at least 28 trademarks registered by the Complainant in the United States and other countries since 1997. A selection is as follows:

NCLEX, United States Patent and Trademark Office (USPTO), principal register, registered July 15, 1997, registration number TMA958268, in class 41;
NCLEX-RN, USPTO, principal register, registered July 22, 1997, registration number 2080449, in class 41;
NCLEX PRACTICE EXAM, USPTO, principal register, registered October 22, 2019, registration number 5888765, in class 41;
NCLEX-PN, USPTO, principal register, registered July 22, 1997, registration number 2080448, in class 41;
NCLEX-RN, Canadian trademark, registered December 16, 2016, registration number TMA958245, in classes 16, 35, and 41;
NCLEX, European Union Trade Mark, registered July 20, 2019, registration number 018022185, in classes 16 and 41.

The Complainant also operates the website “www.ncsbn.org”.

The Respondent has not provided any background information except for the contact details provided in order to register the disputed domain name on April 19, 2021. According to the website to which the disputed domain name has resolved (the “Respondent’s website”), and which displays the acronym NCSBN, the Respondent provides help and assistance to candidates wishing to pass nursing examinations.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the trademark NCLEX standing alone or in certain combinations. The Complainant has used the trademark NCLEX since at least as early as 1985, a period of some 35 years, in connection with nursing examinations and associated educational materials.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name fully incorporates the trademarks NCLEX and NCLEX-RN. The additional element “lpn” is an acronym meaning “licensed practical nurse”.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been granted any right to use the Complainant’s trademarks and such use is unauthorised. The Complainant says the Respondent’s use of the disputed domain name has been for commercial gain by trading on the Complainant’s goodwill and trademarks and by intent to create a mistaken belief among visitors to the corresponding website that it represents the Complainant.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant says the disputed domain name was registered with intent to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks, or to prevent the Complainant from registering the corresponding domain name.

The Complainant alleges that the Respondent’s website contains fraudulent reproductions of material copied from the Complainant’s own website. The Respondent’s website gives a purported street address that is the Complainant’s actual street address. Among other untrue statements, the Respondent’s website claims to be that of “a group of IT engineers working for the National Council of States Board of Nursing (NCSBN)”. The Respondent insinuates that it has access to information in the Complainant’s computer systems and can provide a “backdoor process to help anyone who wants to become a nurse RN or LPN”. The Respondent implies that it can provide examination candidates with the questions in advance and can even change results from a failure grade to a pass grade.

The Complainant also says the Respondent claims to be able to issue licences “to work in any public hospital over the world” without needing to sit the examinations.

The Complainant says that the Respondent cannot fulfil any of its claims to be able to interfere with the Complainant’s examination processes. It is, however, clear from the Respondent’s actions that it had actual knowledge of the Complainant and its trademarks at the time of registration of the disputed domain name.

The Complainant has cited previous decisions under the Policy that it considers may be of assistance to the Panel.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel is satisfied by the evidence produced that the Complainant is the holder of registered trademarks comprising NCLEX standing alone or in combination, including NCLEX-RN.

On a direct comparison, the disputed domain name is found to contain the entirety of the trademark NCLEX and, neglecting the hyphen, the entirety of the trademark NCLEX-RN, and therefore to be confusingly similar to those trademarks. The additional component “lpn” in the disputed domain name is found not to detract from confusing similarity, and in any case appears to allude to an aspect of the Complainant’s services in respect of the qualification “licensed practice nurse”. The technically necessary generic Top-Level Domain (“gTLD”), in this instance “.com”, need not be taken into consideration. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has set out a prima facie case to the effect that it has not granted to the Respondent any right to use the Complainant’s trademarks and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The Complainant has produced evidence showing that the website to which the disputed domain name has resolved has represented itself as being operated or sanctioned by the Complainant and has purported to offer ways of defeating the examination requirements needed to gain registration in the field of nursing. Any such offering cannot qualify as a bona fide offering of goods or services, or as fair or noncommercial under paragraphs 4(c)(i) and (iii) of the Policy. There is no evidence or reason to believe that the Respondent is or has been commonly known by the disputed domain name or similar. The Respondent has not responded to the contrary and has not asserted any rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. The Complainant invokes paragraphs 4(b)(ii) and (iv) of the Policy.

The Panel has examined the evidence of the website to which the disputed domain name has resolved. The website makes liberal use of the Complainant’s trademark NCLEX. The top of the first page is headed “Nclex rn-lpm”, followed by the banners “Nursing Regulator Knowledge!” and “THE WORLD LEADER”. A prominent link button labelled “Solution” below these banners leads to a number of sub-pages that provide extensive information about nursing qualifications and the work of the Complainant, which the Complainant says have been largely copied from its own website. The sub-pages are headed with the Complainant’s logo comprising “NCSBN” and a stylised world globe. Since part of the Respondent’s landing page states, among other things (with the Complainant’s name erroneously expressed), “We are a group of IT engineers working for the National Council of States Board of Nursing (NCSBN)”, it is clear that the Respondent is aware that the Complainant is known as NCSBN and that the Respondent intends the disputed domain name, through the website sub-pages, to be confused with the Complainant. The confusion is consolidated by the NCSBN logo on the sub-pages being adapted by having its small print tag line replaced with the expression “NCLEX RN-LPN SOLUTION”, being effectively the disputed domain name without its gTLD, and the word “solution”.

Whilst much of the extensive content of the Respondent’s website is in veiled language, the Panel finds on the balance of probabilities that the majority of interested readers would conclude that the Respondent had privileged access to the Complainant’s examination system and was able to offer special help in passing the examinations, or was able even to adjust results after the examination. Statements include, for example, among others, “We are in charge of the boards database and we control all informations that enters or leaves the database”; “So we created this backdoor process to help anyone who wants to become a nurse RN or LPN”; “With this back process we've help over 7000 nursing students accomplish their dreams by providing this back door service”; “... we can change the scores from Fail to Pass because we're in charge of NCLEX RN and PN Exams ...”; “... we do issue licenses without you sitting for the exams and with this license is 100% legit you can use this license to work in any public hospital over the world ...”; and “... we get to derive your exact questions and answers in the database system and this are your exact questions and answers you'll be seeing in your exam hall ...”. The Complainant states, and the Panel accepts, that these various claims are untrue.

Thus, on the totality of the evidence, the Panel finds that the disputed domain name is being used to attract Internet users to the Respondent’s website to which it resolves, by intending to represent itself by confusion as being the Complainant, or that the content of the website is connected to the Complainant. It may reasonably be inferred that the Respondent’s investment of time and money in its operation is for ultimate commercial gain. The Panel finds the Respondent to be acting in bad faith in the terms of paragraph 4(b)(iv) of the Policy. Furthermore, on the totality of the evidence, the Panel finds the disputed domain name to have been registered for the bad faith purpose for which it is being used.

On the evidence and on the balance of probabilities, the Panel finds registration and use of the disputed domain name by the Respondent in bad faith in the terms of paragraph 4(a)(iii) of 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 name <nclexrn-lpn.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: June 17, 2021