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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vedior N.V., Vedior International Contracts B.V. and Select Appointment (Holdings) Limited v. Rajesh Kumar

Case No. D2006-1507

 

1. The Parties

The Complainants are Vedior N.V., Vedior International Contracts B.V. and Select Appointment (Holdings) Limited (hereinafter “the Complainant”), St. Albans, Herts, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Rajesh Kumar, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <vedior-it.com> (hereinafter “Domain Name”) is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2006. On November 27, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On November 27, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical 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 the Respondent of the Complaint, and the proceedings commenced on December 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2006.

The Center appointed Anna Carabelli as the sole panelist in this matter on January 10, 2007. 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.

Upon reviewing the Complaint and the Annexes attached thereto, the Panel issued Procedural Order No. 1 which was notified to the parties on January 23, 2007, requesting the Complainant to submit by January 31, 2007 supplemental evidence on Complainant’s trademarks and additional information and documentary evidence to establish relation among the companies which jointly filed the Complaint. The Panel also postponed the deadline for decision until February 4, 2004. Following subsequent requests for extension by the Complainant, the supplemental filing was completed on February 21, 2007 and the new decision date was postponed until March 2, 2007.

 

4. Factual Background

The Complainants are Vedior N.V., Vedior International Contracts B.V. and Select Appointments (Holdings) Limited. These companies are related. Select Appointments (Holdings) Limited and Vedior International Contracts B.V. are subsidiaries of Vedior N.V. as confirmed by the Vedior Group structure chart submitted by the Complainant in response to the Panel Order No. 1.

The Complainant in response to Panel Order No. 1 also submitted extracts from online national, community and international registry databases of word, design and composite trademarks comprising the word VEDIOR. Some of the relevant registered trademarks are listed below:

A) National trademark registrations:

Trademark	Country	Reg. No.	Registration date
VEDIOR	Benelux	709543	October 10, 1988
VEDIOR	Benelux	913464	February 1, 1999
VEDIOR	Australia	760260	February 4, 1999
VEDIOR	Brazil	820764582	May 22, 1998
VEDIOR	Canada	539866	May 13, 1998
VEDIOR	Czech Republic	704574	November 23, 1998
VEDIOR	Hong Kong	199911792	September 24, 1999
VEDIOR	Japan	4333240	November 12, 1999
VEDIOR	U.S.A.	2745453	August 5, 2003

B) Community trademark registration:

Trademark	Reg. No.	Registration date
VEDIOR	E2642940	July 28, 2003

C) International trademark registration:

Trademark	Reg. No.	Registration date
VEDIOR	704574	November 23, 1998

The Complainant submitted evidence that the Complainant is operating the website “vedior.com” (Annexes 6 and 7).

The Respondent registered the domain name <vedior-it.com> on December 22, 2004 (Annex 1).

The Domain Name, as the Panel could verify by accessing the corresponding website, is used as a referral portal which through key words lead to third parties’ websites, most of which offer recruitment services.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Complainant is an international staffing services company, operating in 45 countries and as such has acquired a reputation and has built a substantial goodwill in its name in relation to recruitment services;

- the Complainant offers recruitment services in a large number of sectors among which also the information technology one (I.T.);

- the Complainant has registered several word and device marks of the trademark VEDIOR in various countries, in classes 35, 37, 41 and 42;

- the Complainant has rights in the logo “Vedior, where people matter”;

- the Domain Name is identical and confusingly similar to the Complainant’s registered trademarks because it incorporates the trademark VEDIOR in its entirety and the “IT” part of the Domain Name is ancillary to the dominant part of the Domain Name being “Vedior”;

With respect to the Respondent the Complainant further contends that:

- the Respondent has no right or legitimate interest in the Domain Names and is solely trying to piggyback on the substantial reputation and goodwill that the Complainant has generated in its trademark and name;

- the Domain Name was registered in bad faith with a view of disrupting the Complainant’s business and/or attempting to attract for commercial gain internet users to the Respondent’s website.

B. Respondent

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

 

6. Discussion and Findings

Preliminarily, the Complainant has submitted evidence to support that the companies filing the Complaint are related and have sufficient interest in the Domain Name for them to be joined in this action. Therefore, the Panel, in line with previous WIPO UDRP decisions, accepts these multiple companies as the Complainant (see Adidas International Marketing BV and adidas-Salomon AG v. Sonia Eguia, WIPO Case No. D2006-0475; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademark VEDIOR by submitting several extracts from online registries database, some of which are listed under section 4 above.

The Panel, following previous WIPO UDRP decisions, deems that the Domain Name is confusingly similar to the VEDIOR registered trademarks as it incorporates the word Vedior in its entirety and the addition of an hyphen and of the suffix “IT” is not capable to sufficiently differentiate the Domain Name from the Complainant’s trademarks. (See e.g.: VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313; F. Hoffmann-La Roche AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).

On the contrary, given that the Complainant provides staffing services also for the Information Technology sector, commonly referred to as “IT”, the Panel finds that the suffix “IT” contained in the Domain Name, may increase confusion in the Internet users’ mind and perception as to the existence of a relation between the Domain Name and the Complainant.

Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed Domain Name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complaint’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.

Consequently, the Panel deems that the Respondent has no rights or legitimate interest in the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As established in section 6.A. above, the Domain Name is confusingly similar to the Complainant’s trademarks which were registered before the registration of the Domain Name by the Respondent.

Moreover, the Panel accepts that the name and the trademark VEDIOR is widely known in connection with recruitment services, based on (i) the number of countries (45) in which the Complainant is present, (ii) the number of offices opened worldwide (over 2,200), (iii) the number of job offerings posted on its official website (Annexes 6 and 7) and (iv) the continuous and extensive contact with people and enterprises, which is usual activity for the recruitment services.

In light of the above and in consideration of the fact that the Respondent has used the Domain Name in connection with recruitment services and has displayed the Complainant’s Logo “VEDIOR, where people matter” in the website accessible through the Domain Name, the Panel finds that the Respondent was undoubtedly aware of the Complainant at the time the Respondent registered the Domain Name (see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397).

Consequently, the Panel finds that the Respondent has registered the Domain Name in bad faith.

Moreover, the Domain Name is used as a referral portal to divert Internet users, through key words, to third parties’ sites some of which offer recruitment services in direct competition with the Complainant. Further, it is very likely that the Respondent’s purpose in such use, is that of collecting referral or click-through fees.

Both the above circumstances have been held by various WIPO UDRP decisions as clear evidence of bad faith use of a domain name (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096; Philip Morris Incorporated v. r9.net, WIPO Case No. D2003-0004).

In light of all the above circumstances, the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

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, <vedior-it.com> be transferred to the Complainant.

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Anna Carabelli
Sole Panelist

Dated: March 2, 2007