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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CareerBuilder, Inc. v. John Morgan

Case No. D2003-0907

 

1. The Parties

The Complainant is CareerBuilder, Inc., a company with its principal place of business in Reston, Virginia, United States of America (hereinafter "the Complainant"). It is represented by the law firm Sonnenschein Nath & Rosenthal of Chicago, Illinois, United States of America.

The Respondent is John Morgan, residing at Sanibel, Florida, United States of America (hereinafter "the Respondent").

 

2. The Domain Name and Registrar

The domain name at issue in this proceeding is <carerbuilder.com>.

The Registrar is eNom.com of Bellevue, Washington, United States of America (hereinafter "the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on November 13, 2003, and in hard copy on November 17, 2003.

On November 14, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. The Registrar did not verify the Center’s request; accordingly, on November 20, 2003, the Center independently verified, via the WHOIS database, that the disputed domain name was registered with eNom, that the Respondent, John Morgan, was the current registrant of the disputed domain name, and that the status of the registration was locked. The Center subsequently checked the compliance of the Complaint with 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").

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2003. In accordance with the Rules, Paragraph 5(a), the due date for the Response was December 10, 2003. The Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on December 15, 2003.

The Center appointed D. Brian King as Sole Panelist in this matter on December 29, 2003. The Sole Panelist 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 facts relevant to the current dispute are set out in the Complaint. Considering the allegations therein, the evidence produced and the fact that the Respondent has not filed a Response contesting the Complainant’s contentions, the Panel finds the following facts to have been established.

The Complainant is a well-known online recruiting company and first registered the CAREERBUILDER mark in the United States in 1996 (see Complainant’s exhibit 4). The Complainant subsequently obtained registered trademarks for CAREERBUILDER (and variations thereof) in Mexico, Canada, Australia and the European Union (see id.).

The Complainant carries out its business on the Internet primarily through its website "www.careerbuilder.com", which it has been using since 1996 (see Complainant’s exhibits 3 and 5). The Complainant also owns and uses in its business the following domain names: <careerbuilder.org>, <careerbuilderinc.com>, <careerbuilderit.com>, <careerbuilderpsa.com>, <careerbuildermail.com>, <careerbuilderinfo.com>, <careerbuilderachieve.info>, <careerbuildernetwork.info>, and <thecareerbuildernetwork.info> (see Complainant’s exhibit 3).

The Respondent, who resides in the U.S., registered the disputed domain name on October 12, 2000, i.e., long after the Complainant registered its marks with the United States Patent and Trademark Office (see Complainant’s exhibit 3). By that time, the Complainant had built up substantial good will in its CAREERBUILDER mark through continuous use in Internet commerce and the expenditure of approximately US$200 million on marketing and promotional efforts (see Complainant’s exhibit 3, para. 12).

The disputed domain name is currently in use and automatically redirects the user to <americansingles.com>, an online dating service.

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant argues that the disputed domain name is confusingly similar to its registered CAREERBUILDER mark. It argues that the misspelling of its mark (carerbuilder) does not render the disputed domain name sufficiently distinct to avoid a likelihood of confusion.

Next, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he otherwise been authorised by the Complainant to use its mark. The Complainant further argues that the Respondent was not known by, or doing business under, the name "CarerBuilder" prior to the registration of the disputed domain name.

Finally, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent has engaged in "typo-squatting," causing Internet users seeking the Complainant’s website to be diverted to an unrelated site for the Respondent’s commercial gain. Furthermore, the Complainant points, as an additional indicator of bad faith, to the Respondent’s failure to make any reply to the Complainant’s "cease and desist" letter dated June 16, 2003 (see Complainant’s exhibit 8).

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

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

Notwithstanding the Respondent’s default, the Complainant retains the ultimate burden of proof on each of these elements. They will be examined in turn below.

A. Identical or Confusingly Similar

The domain name at issue is confusingly similar to the Complainant’s registered trademark CAREERBUILDER, as well as to its earlier-registered domain name, <careerbuilder.com>. The disputed domain name is, indeed, identical to the Complainant’s mark, but for the omission of an "e" in the word "career." Numerous Panels have held that where a domain name consists of a common misspelling of a Complainant’s mark, that is sufficient to make the domain name "confusingly similar" within the meaning of the Policy. See CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493 (August 5, 2003), at page 3; CareerBuilder, Inc. v. John Zuccarini, WIPO Case No. D2002-0282 (May 21, 2002), at page 4; Caesars World, Inc. v. George Godoy and Ceasars Palace Casino, WIPO Case No. D2002-0050 (March 22, 2002), at page 3; Geocities v. Geociites.com, WIPO Case No. D2000-0326 (June 19, 2000), at page 3. Accordingly, the Panel concludes, without difficulty, that the disputed domain name is confusingly similar to the Complainant’s registered mark. The first element under Paragraph 4(a) has thus been met by the Complainant.

B. Rights or Legitimate Interests

The Panel is further satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of rights or legitimate interests is present here.

First, the record does not support the conclusion that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. To be sure, the Respondent is using the domain name for commercial purposes; the domain name, when accessed, automatically redirects users to a commercial online dating service. However, in the circumstances here, such commercial use cannot be deemed to be bona fide. The Respondent has no permission or license to use the Complainant’s mark, and he was on constructive notice of the Complainant’s rights in the CAREERBUILDER mark at the time he registered the disputed domain name. This follows from the Complainant’s registration of CAREERBUILDER as a trademark in 1996 in the United States, the domicile of both the Complainant and the Respondent. See 15 U.S.C. § 1072 (trademark registration constitutes constructive notice of the registrant’s claim of ownership thereof); The Step2 Company v. Softastic.com Corp., WIPO Case No. D2000-0393 (June 26, 2000), at page 4. Indeed, the Respondent almost certainly had actual knowledge of the Complainant’s rights in the mark, given the Complainant’s extensive use of it in Internet commerce since 1996. In these circumstances, the Respondent’s use of the disputed domain name does not constitute bona fide commercial use.

Second, there is no evidence to suggest that the Respondent has "been commonly known" by the disputed domain name. The name "CarerBuilder" (or even "CareerBuilder") has no apparent association with the Respondent, his business, or the dating service website to which the disputed domain name redirects Internet users.

Finally, the disputed domain name is being used for commercial purposes and hence does not meet the "non-commercial or fair use" criterion.[1]

Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of 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 the Respondent 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 website 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 website or location, or of a product or service on the website or location.

For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Those four circumstances are, furthermore, not exclusive, and other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

In the present case, the Panel is satisfied that the Complainant has sufficiently established the circumstance listed in Paragraph 4(b)(iv) of the Policy. It has already been established above that the disputed domain name is confusingly similar to the Complainant’s mark and that the Respondent has no rights or legitimate interests in the domain name. Furthermore, the site is being used for commercial gain.

The determinative question, then, is whether it can be inferred that in registering and using the disputed domain name, the Respondent has intentionally attempted to trade on the Complainant’s mark by creating a likelihood of confusion. The Panel concludes that such an inference properly arises on the evidence here. Considering that the Respondent was on at least constructive notice of the Complainant’s rights in the name "CareerBuilder" at the time he registered the disputed name, the lack of any apparent connection between the name and the Respondent’s online dating business, and the fact that the disputed domain name constitutes a common misspelling of the Complainant’s mark, a reasonable inference arises that the Respondent registered and used the domain name in an attempt to misdirect internet users to his own site for commercial gain. This inference is strengthened by the Respondent’s failure to make any response to the Complainant’s "cease and desist" letter on June 16, 2003 (see above and Complainant’s exhibit 8).

The Panel lastly notes that the Respondent had an opportunity to explain his legitimate interest in the use of the domain name, if any, by submitting a Response to the Complaint. He has failed to do so, and this failure justifies the inference that any response he could honestly have given would have been consistent with the findings made against him above.

Based on the foregoing, the Panel concludes that bad faith registration and use have been sufficiently established with respect to the domain name <carerbuilder.com> in accordance with Paragraph 4(b) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <carerbuilder.com>, be transferred to the Complainant.

 

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D. Brian King
Sole Panelist

Dated: January 13, 2004

 

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1. As noted, the disputed domain name resolves to a dating website, . The Terms and Conditions under the heading "Registration & Subscription" on the website state as follows: "Although you may register as a Member of the Service for free, if you wish to communicate with other members and use certain other parts of the Service, you must become a subscriber and pay the fees that are set out in our price list."