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and Mediation Center
CareerBuilder, LLC v. Finity Development Group
Case No. D2006-0615
1. The Parties
Complainant is CareerBuilder, LLC, of Chicago, Illinois, United States of America, represented by Latham & Watkins LLP of Chicago, Illinois, United States of America.
Respondent is Finity Development Group of Louisville,
Kentucky, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nationalcareerbuilders.com> (the “Domain
Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2006. On May 18, 2006, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 25, 2006, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and billing contact. The Center verified that the 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 20, 2006.
The Center appointed Douglas M. Isenberg as the sole
panelist in this matter on July 3, 2006. 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
Complainant states that it adopted the trademark CAREERBUILDER in May 1996, in connection with an online employment recruiting agency and related services and that its services are generally offered through its website using the domain name <careerbuilder.com>. Complainant states that it has obtained the following trademark registrations, each of which is supported by a certificate of registration provided as an exhibit to the Complaint:
July 22, 1997
March 16, 2004
June 8, 19991
January 31, 2000
July 13, 2001
The Domain Name was created on March 9, 2006.
Complainant states that it sent a demand letter to
Respondent on April 24, 2006, a copy of which is provided as an exhibit to the
Complaint. As shown in e-mail correspondence provided by Complainant, Respondent
stated that he would “delete” the Domain Name and, at one point,
may have canceled it but later apparently reinstated it with Go Daddy Software.
Complainant states that, at various points in time, the Domain Name was used
in connection with a job-search website known as “CareerFinder,”
in connection with “a GoDaddy parking page that contained links to Complainant’s
direct competitors and other infringing content”, and in connection with
no website at all.
5. Parties’ Contentions
Complainant alleges that the Domain Name is confusingly similar to its CAREERBUILDER trademark.
Complainant alleges, as set forth in more detail below, that Respondent has no rights or legitimate interest in the Domain Name.
Complainant alleges that Respondent registered and used the Domain Name in bad faith by “creat[ing] an employment-related website using the Disputed Domain Name in direct competition with Complainant,” by “captur[ing] Complainant’s actual or potential customers and divert[ing] them to unauthorized websites that are not sponsored or endorsed by or affiliated with the Complainant” and by “refus[ing] to relinquish the Disputed Domain Name after receiving notice of the infringement upon Complainant’s Mark.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the U.S. trademark registrations cited by Complainant, supported by copies of U.S. trademark certificates of registration, it is obvious that Complainant has rights in the CAREER BUILDER mark.
As to whether the Domain Name is identical or confusingly similar to Complainant’s CAREER BUILDER mark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “nationalcareerbuilders”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); See also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
The Domain Name differs from Complainant’s trademark in only two respects: (1) the Domain Name adds the letter “s” to make it plural, and (2) the Domain Name adds the word “national”. Neither of these differences negates the confusing similarity between the Domain Name and Complainant’s trademark.
With respect to the addition of the letter “s,” this Panel agrees
with the decision in CareerBuilder, LLC v. Names for sale, WIPO
Case No. D2005-0186, in which the panel there stated, in a dispute over
the domain name <careersbuilder.com>:
“That alteration does little to change the apparent meaning of the name for prospective Internet users. Obviously, a user would expect to find multiple employment opportunities under either title and would likely think she was dealing with the same company. Alternatively, the user could simply intend to enter the Complainant’s website, “www.careerbuilder.com”, identical to the Complainant’s mark, and enter the Respondent’s website by the simple keystroke error of entering an additional ‘s’ to the name. Earlier WIPO UDRP panels have found that such minor differences serve only to cause confusion among such users.”
With respect to the addition of the word “national,” this Panel
agrees with the decision cited by the Complainant, PepsiCo, Inc. v. Kieran
McGarry, WIPO Case No. D2005-0629,
in which the panel there stated, in a dispute over the domain name <pepsiusa.com>:
“Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark (which descriptive term does not contain any pejorative content or otherwise tend to suggest disassociation from the mark) does not negate the confusing similarity between the mark and the domain name.”
The Panel considers this reasoning applicable in the present case. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant states that “Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the CAREERBUILDER Mark in a domain name or in any other manner. Indeed, Complainant does not sponsor or endorse Respondent’s usage of the CAREERBUILDER Mark in connection with the Disputed Domain Name.” Complainant further states that “Respondent’s registration and use of the CAREERBUILDER Mark has proven to be intended for commercial gain because Respondent has misleadingly diverted consumers to a competitive job search website. Such use also tarnishes the CAREERBUILDER Mark through its promotion of unauthorized Internet products, services, and content. Therefore, Respondent cannot claim to be making a legitimate non commercial or fair use of the Complainant’s Mark.”
Under the Policy, “a complainant is required to make out an initial prima
facie case that the respondent lacks rights or legitimate interests. Once
such prima facie case is made, respondent carries the burden of demonstrating
rights or legitimate interests in the domain name. If the respondent fails to
do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, paragraph
(visited July 12, 2006).
The Panel is satisfied that such a prima facie case has been made out in the present case. Accordingly, as a result of Complainant’s allegations, and in the absence of a Response, and without any other evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant alleges that bad faith exists pursuant to paragraph
4(b)(iv) of the Policy, that is, that “by using the domain name, the registrant
has intentionally attempted to attract, for commercial gain, Internet users
to the registrant’s 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 registrant’s website or location or
of a product or service on the registrant’s website or location.”
The website billed as “CareerFinder” that was previously associated
with the Disputed Domain Name prior to the date (April 24, 2006) of Complainant’s
cease and desist letter to the Respondent satisfies paragraph 4(b)(iv) of the
Policy, given the similarity of services offered via that website and the services
offered by Complainant on its own website at <careerbuilder.com>. Although
the Domain Name now apparently is being used in connection with an inactive
website, the Panel agrees with the decision cited by Complainant, Comerica
Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615,
that Complainant need not “wait for some future use of the disputed domain
name to occur in order to demonstrate Respondent’s bad faith use….
The fact that this misappropriation may occur in any as yet undetermined manner
at an uncertain future date does not negate Respondent’s bad faith. On
the contrary, it raises the specter of continuing bad faith abuse by Respondent
of Complainant’s Mark, name and related rights and legitimate business
In light of the above, the Panel considers that on
the balance, the Domain Name has been registered and is being used in bad faith.
Therefore, the Panel is satisfied that the Complainant has proven the third
element required by the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nationalcareerbuilders.com> be transferred to Complainant.
Douglas M. Isenberg
Dated: July 12, 2006
1 The registration date for this trademark listed in the body of the Complaint is December 11, 2000, but the registration date shown in the registration certificate provided as an exhibit is June 8, 1999. In any event, this discrepancy is irrelevant to the decision.
2 The registration number for this trademark listed in the body of the Complaint is 548,118, but the registration number shown in the registration certificate provided as an exhibit is 548,113. In any event, this discrepancy is irrelevant to the decision.