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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sales Jobs, Inc. v. JobAnimal.com Inc.

Case No. D2007-0906

 

1. The Parties

The Complainant is Sales Jobs, Inc. of California, United States of America, represented by Andrew K. Jacobson, of California, United States of America.

The Respondent is JobAnimal.com Inc., of Ontario, Canada, represented by Smart & Biggar, of Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <salesjobs.net> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 20, 2007, and in hardcopy on June 26, 2007.

The Center transmitted its standard request for registrar verification to the Registrar by email on June 21, 2007. The Registrar responded by email the same day, confirming that the Domain Name was registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts at the location of its principal office; providing the contact details in respect of the Domain Name on its Whois database; and stating that it had not received a copy of the Complaint.

The Center notified the Complainant on June 28, 2007, that the Complaint was administratively deficient in that it did not contain a submission to a mutual jurisdiction in accordance the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant filed an amendment to the Complaint by email on June 29, 2007, and in hardcopy on July 3, 2007, submitting to the jurisdiction at the principal office of the Registrar.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 July 10, 2007. This notification was also sent to the Registrar thereby curing any earlier deficiency in notifying the Complaint to the Registrar. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2007. The Response was filed with the Center by email on July 27, 2007, and in hard copy on July 31, 2007.

The Complainant submitted a Reply to the Response by email on August 24, 2007. The Center informed the Complainant that it would draw this submission to the Panel’s attention and that the Panel had a discretion whether to admit it. The Respondent asked for an opportunity to respond to this submission if it was admitted and subsequently sent a response to this submission to the Center.

The Center appointed Jonathan Turner as the sole panelist in this matter on August 22, 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.

4. Procedural Ruling

As noted above, the Complainant has submitted a Reply to the Response and the Respondent has asked for an opportunity to respond to this further submission if it is admitted.

Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.

As stated in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the principles applied in exercising this discretion are “that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself”.

As pointed out in that case, “these principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules”.

Applying these principles to the present case, the Panel notes first that the Complainant has not set out reasons for admitting the further submission separately from it. Secondly, the Panel considers that the submission does not contain any significant points whose existence and relevance should not have been apparent to the Complainant when it submitted the Complaint. Thirdly, the Panel does not discern any other ground justifying the admission of the further submission within the procedural context explained above.

In all the circumstances, the Panel has decided not to admit the Complainant’s further submission. It follows that the Respondent’s submission in response to it should also not be admitted.

5. Factual Background

The Complainant is based in San Anselmo, California, United States of America, and has operated a sales employment website at “www.salesjobs.com” for ten years. The Complainant has also registered a considerable number of other domain names with second level domains consisting of “salesjob” or “salesjobs” together with a geographical indication, such as <californiasalesjobs.com>.

In 2000, the Complainant sued Eric Schier, the former owner of <salesjobs.net> (the Domain Name), <salesjob.com> and other similar domain names. In a stipulated judgment entered in the Alameda County Superior Court on July 13, 2001, Schier agreed to surrender these domain names to the Complainant. However, it appears that Schier did not comply with this judgment as regards the Domain Name. The Domain Name was instead transferred to Americanjobfairs.com, then to Buy.com, and then to the Respondent. The Complainant had contacted Americanjobfairs.com and Buy.com, but these entities did not comply with its requests to transfer the Domain Name to it.

SALESJOBS.COM was registered as a service mark in the Supplemental Register of the United States Patent and Trademark Office on July 24, 2001, pursuant to an application of October 12, 1999, in the name of the Complainant’s President, Eric John Ruiz.

The Respondent is based in Ottawa, Ontario and has operated an employment website at “www.jobanimal.com” since 2000. It has established a network of over 700 specialised websites using domain names such as <bankingjobs.ca>. These include a number of domain names incorporating the phrase “salesjobs”, such as <financialsalesjobs.net>. In particular, the Respondent has operated a website at “www.salesjobs.ca” since early 2001.

The Respondent purchased the Domain Name on October 3, 2006 after it had been on sale for some six months. Almost immediately after this the Respondent established an employment website using the Domain Name in similar form to its other websites.

6. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Complainant states that it is the world’s largest sales employment website, that its trademarks are famous within the meaning of the United States Lanham Act, and that the relevant public in the United States of America and worldwide have come to associate services under the SALESJOBS.COM trademark with the Complainant. It also alleges that it has been granted a United States federal trademark registration for this mark.

The Complainant further contends that relevant consumers are likely to be confused into thinking that the Domain Name emanates from or is affiliated with or sponsored by the Complainant. Citing various precedents, it submits that the difference in the top level domain between its mark and the Domain Name is of no significance.

Respondent’s Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name, in that the Respondent is not licensed or authorized by the Complainant to use a similar mark and is not commonly known by the Domain Name. The Complainant further contends that the Respondent was or should have been aware of the Complainant’s trademark and name when it registered the Domain Name, relying on constructive notice afforded by its trademark registration and actual notice given to the Respondent’s predecessors in title.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith, referring to the Respondent’s alleged lack of prior or bona fide use and constructive or actual notice of the Complainant’s prior rights. According to the Complainant, the Respondent is parasitically using the Complainant’s popularity to compete in the sales employment field by pretending to be linked to the Complainant by use of the Domain Name.

B. Respondent

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Respondent notes that the trademark registration on which the Complainant relies is in the name of Eric John Ruiz and submits that the Complaint does not establish any relationship or assignment of rights between Mr. Ruiz and the Complainant.

The Respondent also points out that some of the domain names containing the term “salesjob.com” which the Complainant claims to own are registered in the names of other parties. The Respondent further points out that it owns a number of domain names which contain the term “salesjobs” and contends that the Complainant cannot claim that its alleged trademark has become distinctive through exclusive use. The Respondent also disputes the Complainant’s contention that it is the world’s largest sales employment website.

The Respondent further maintains that the alleged trademark is per se non-distinctive, since it is formed of the generic words “sales” and “jobs”. The Respondent notes that the alleged mark is registered only in the Supplemental Register of the U.S. Patent and Trademark Office which occurs when an applicant seeks registration for a mark that is descriptive in nature and has not yet acquired distinctiveness in the trade.

Respondent’s Rights or Legitimate Interests

The Respondent’s case on rights or legitimate interests and bad faith is supported by an Affidavit of its President, Jason Stevens, which verifies the factual elements on which it is based.

The Respondent states that its first notice of the dispute was on June 20, 2007, when it received a copy of the Complaint. It points out that prior to this date it had a number of websites at domain names incorporating the phrase “salesjobs”, including <salesjobs.ca> which it has used since early 2001. It submits that this use was legitimate: it had no knowledge of the Complainant and no constructive notice of the Complainant’s alleged trademark registration given that it is based in Canada, and furthermore its websites are completely distinguishable from the Complainant’s.

The Respondent also relies on its use of the Domain Name itself between its acquisition in October 2006 and notice of the Complaint in June 2007.

Registered and Used in Bad Faith

The Respondent states that it has never offered to sell the Domain Name to any person, that it did not acquire the Domain Name for the purpose of disrupting the business of the Complainant, and that it has not intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

According to the Respondent’s evidence, prior to receiving the Complaint in this proceeding, it had no knowledge of the Complainant or of the US judgment relating to the Domain Name, and had not received any objection to its use of the domain name <salesjobs.ca>. The Respondent submits that it is a bona fide purchaser of the Domain Name for value without notice of any prior claims of the Complainant. The Respondent also maintains that the United States doctrine of “constructive notice” of a trademark registration does not apply since it is not resident in the United States of America.

 

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (A) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (C) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to mark in which Complainant has rights

It is necessary to consider first whether the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy in the mark SALESJOBS.COM on which it relies, either by virtue of its registration at the United States Patent and Trademark Office or at common law based on its use.

The registration of the mark is in the name of Eric John Ruiz. Although not explicitly stated in the body of the Complaint, it is apparent from various documents annexed to the Complaint that Mr. Ruiz is the President of the Complainant. In line with DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939 (<digipoll.com>) and other decisions under the Policy, the Panel accepts that in these circumstances the Complainant has at least an implicit licence to exploit the registered trademark and that this suffices to confer “rights” on the Complainant within the meaning of paragraph 4(a)(i) of the Policy.

It is therefore unnecessary to reach a conclusion on whether the Complainant has established rights in the trademark at common law.

The Panel is satisfied that the Domain Name is confusingly similar to the mark, from which it differs only in the generic top-level domain suffix. In this connection, it should be noted that, as confirmed in numerous decisions, the Policy requires a comparison of the Domain Name with the Complainant’s mark, unaffected by the possibility that the content of the Respondent’s website may differentiate it from the Complainant’s.

The Panel concludes that the Complainant has established the first requirement of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied that the Respondent has rights or legitimate interests in respect of the Domain Nameby virtue of its longstanding use of the domain name <salesjobs.ca> since early 2001. That domain name differs from the Domain Name only in the top-level domain suffix. The Panel considers that it is a name corresponding to the Domain Name within the meaning of paragraph 4(c)(i) of the Policy.

Furthermore, according to the Respondent’s evidence, its use of the domain name <salesjobs.ca> has been in connection with a bona fide offering of services. This evidence is verified by a sworn affidavit. The Panel is not able to reject this evidence on the material available in this proceeding.

The absence of any objection by the Complainant to the Respondent’s use of the domain name <salesjobs.ca> in over six years is consistent with the absence of confusion between the parties’ businesses and the Respondent’s good faith. It may reflect the fact that where descriptive names are used, members of the public rely on other matters to distinguish between businesses.

The Panel is also satisfied by the sworn evidence of the Respondent that prior to receipt of the Complaint it was unaware of any rights claimed by the Complainant in respect of the Domain Name.

The Panel concludes on the evidence in this proceeding that the Respondent’s use of the domain name <salesjobs.ca> has been bona fide so as to give rise to a legitimate interest in respect of the Domain Name.

Accordingly, the Panel finds that the Complainant has not established the second requirement of the Policy.

C. Registered and Used in Bad Faith

The Panel also considers that the Respondent has not established the third requirement of the Policy. There is nothing in the file which undermines the credibility of the Respondent’s sworn evidence that it had no knowledge of the rights claimed by the Complainant prior to receipt of the Complaint. In these circumstances, the Panel considers that the Complainant has not shown that the Respondent registered and is using the Domain Name in bad faith.

The Panel agrees with the Respondent’s submission that the doctrine of constructive notice of a trademark registration under United States law does not assist in establishing bad faith for the purpose of the Policy in a case such as the present where the Respondent is not based in the United States. This view accords with that of the Panel in Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic, WIPO Case No. D2002-0772, and other decisions under the Policy.

8. Decision

For all the foregoing reasons, the Complaint is denied.

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Jonathan Turner
Sole Panelist

Dated: September 5, 2007