WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benchmark Staffing, Inc. v. Benchmark Jobs, LLC
Case No. D2001-0663
1. The Parties
The Complainant is Benchmark Staffing, Inc., a corporation organized in the
State of California, United States of America (USA), with place of business
in Menlo Park, California, USA.
The Respondent is BenchMark Jobs, LLC, with place of business in Fort Lauderdale,
Florida, USA.
2. The Domain Name and Registrar
The disputed domain name is <benchmarkjobs.com>.
The registrar of the disputed domain name is Network Solutions, Inc., with
business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by
e-mail received by the WIPO Arbitration and Mediation Center ("WIPO")
on May 14, 2001, and by courier mail received by WIPO on May 18, 2001.
Payment of the requisite filing fees accompanied the courier mailing. On May
18, 2001, WIPO transmitted a Request for Registrar Verification to the
registrar, Network Solutions, Inc. (with the Registrar’s Response received by
WIPO on May 21, 2001).
(b) Following notice of a formal filing deficiency, WIPO received via e-mail
from Complainant an amendment to the complaint on May 21, 2001, and WIPO received
such amendment to the complaint via courier mail on May 23, 2001.
(c) On May 28, 2001, WIPO transmitted notification of the complaint and commencement
of the proceeding to Respondent via e-mail and courier mail.
(d) On June 14, 2001, Respondent’s response was received via e-mail by WIPO,
and on June 19, 2001, Respondent’s response was received via courier mail by
WIPO. Respondent also transmitted its response to Complainant.
(e) On June 22, 2001, WIPO invited the undersigned to serve as panelist in
this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On January 22, 2001, the undersigned hand delivered
the executed Statement and Declaration to WIPO.
(f) On June 25, 2001, Complainant and Respondent were notified by WIPO of the
appointment of the undersigned sole panelist as the Administrative Panel (the
"Panel") in this matter. WIPO notified the Panel that, absent exceptional
circumstances, it would be required to forward its decision to WIPO by July
8, 2001. The Panel received a hard copy of the file in this matter by courier
from WIPO.
(g) Following a request from the Panel, WIPO notified the parties on July 9,
2001, that the projected date for a decision in this matter was extended until
July 13, 2001.
The Panel has not received any requests from Complainant or Respondent regarding
further submissions, waivers or extensions of deadlines, and the Panel has not
found it necessary to request any further information from the parties. The
proceedings have been conducted in English.
4. Factual Background
Complainant has registered the typed drawing service mark "BENCHMARK STAFFING
SERVICES" on the Principal Register of the United States Patent and Trademark
Office (USPTO), reg. no. 2054451, dated April 22, 1997. (Footnote
1) Such registration is in International Class (IC) 35, covering "personnel
placement and recruitment services". The aforesaid USPTO trademark and
service registration claims a date of first use in commerce of October 8, 1995,
and disclaims use of "STAFFING SERVICES" apart from the mark as shown.
The aforesaid registration is valid and subsisting. (Complaint, para. 12.C &
Annex 3)
Complainant has submitted applications for registration of the typed drawing
service marks "BENCHMARK" and "BENCHMARK SPECIALIZED PRODUCTION
STAFFING" on the Principal Register of the USPTO. Each of these applications
was filed on August 2, 2000, and is active. (Id., Annexes 4 & 5)
Complainant maintains an active commercial Internet website at address (URL)
<www.benchmarkstaffing.com>.
Complainant is the wholly owned subsidiary of a publicly held corporation,
Robert Half International Inc. The parent company provides professional staffing
to businesses, and has over 330 offices worldwide. Complainant provides temporary
staffing in the areas of manufacturing, distribution and production. It has
seventeen offices, and its total revenues for 1997-2000 were in excess of $44
million.
According to the registrar’s verification response to WIPO, dated May 21, 2001,
"Benchmark Jobs, LLC" is the listed registrant of the domain name
<benchmarkjobs.com>. The Administrative Contact, at the same address,
is "Koenigsberg, Jay". According to a Network Solutions’ WHOIS database
record furnished by Complainant, the record for the disputed domain name was
created on August 30, 2000, and was last updated on October 13, 2000 (Complaint,
Annex 1).
The disputed domain name <benchmarkjobs.com> is presently used to redirect
Internet users to a website at address <www.intstaff.com>, which website
home page is headed "Interactive Staffing". The website features,
inter alia, promotion of staffing services for call center, medical and
technical staffing areas. (Id., para. 12.O-P & Annex 10, and Panel
visit of July 11, 2001)
Complainant (through counsel) initially contacted Respondent by letter of February
23, 2001, both in respect to its use of the name "BenchMark Jobs"
for its business operations, and in respect to the disputed domain name (Complaint,
para. 12.I & Annex 7). According to Complainant, Respondent agreed to and
did change the name of its business to "Interactive Staffing", but
refused to agree to cease use of the disputed domain name, and to transfer it
to Complainant (id., para. 12.J-K & Annex 8). According to a sworn
declaration by Complainant’s counsel, during a telephone call placed by Complainant
on March 6, 2001, Respondent offered to sell the disputed domain name to Complainant
for $5,000. Such offer to sell was repeated on March 22, 2001 (Declaration of
Andrew Baum, id., Annex 8).
Respondent asserts that it continues to operate a business under the name "BenchMark
Jobs", although it has provided no supporting evidence for this assertion
(Response, para. 17). Although Respondent does not specifically assert that
it did not offer to sell the disputed domain name to Complainant, it "denies
the allegations" of the paragraphs in which Complainant asserts that the
offers were made (id., para. 14-15). Respondent does not specifically
address the Declaration of Complainant’s counsel regarding the offer for sale.
Respondent asserts that it was unaware of Benchmark Staffing when it began
to use the BenchMark Jobs name for its business (id., para. 17).
The Service Agreement in effect between Respondent and Network Solutions subjects
Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain
Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and
with implementing documents approved by ICANN on October 24, 1999. The Uniform
Domain Name Dispute Resolution Policy (the "Policy") requires that
domain name registrants submit to a mandatory administrative proceeding conducted
by an approved dispute resolution service provider, of which WIPO is one, regarding
allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant states that it has registered the service mark "BENCHMARK
STAFFING SERVICES" at the USPTO and that it uses that mark in commerce.
Complainant states that it has filed applications for registration for the service
marks "BENCHMARK" and "BENCHMARK SPECIALIZED PRODUCTION STAFFING"
at the USPTO and that it uses those marks in commerce. (See Factual Background
supra). Complainant argues that "BENCHMARK" is the "dominant
portion" of its "BENCHMARK STAFFING SERVICES" mark, as evidenced
by the fact that it has disclaimed exclusive use of "STAFFING SERVICES"
except in the mark as shown.
Complainant contends that the disputed domain name <benchmarkjobs.com>
is confusingly similar to the service mark "BENCHMARK" in which it
has rights, in particular because Complainant is in the business of providing
employee staffing services and the disputed domain name is used in the same
line of business.
Complainant alleges that Respondent has no rights or legitimate interests in
the disputed domain name. Complainant states that Respondent was aware of its
mark when it registered the name, or should have been aware of the mark on the
basis of its registration. Complainant states that Respondent’s use of the disputed
domain name infringed its rights and therefore cannot establish rights or legitimate
interests.
Complainant argues that Respondent registered and used the disputed domain
name in bad faith as evidenced by (a) its use of the name to divert Internet
users to a website competing with Complainant’s business, including following
notice of infringement and (b) its offer to sell the name to Complainant for
an amount in excess of its out of pocket expenses related to the name.
Complainant asks the Panel to order the registrar to transfer the disputed
domain name to it.
B. Respondent
Respondent contends that "BENCHMARK" is not the dominant portion
of Complainant’s mark, and that "BenchMark Jobs" is not confusingly
similar to Complainant’s mark.
Respondent argues that although it did take steps to alleviate confusion between
its "BenchMark Jobs" business name and Complainant’s mark, that it
did not relinquish its right to use that name. It states that Respondent continues
to conduct an active business under the "BenchMark Jobs" name and
that it has a legitimate business interest in retaining the name.
Respondent observes and provides printouts of web pages to evidence that a
number of businesses outside the employee staffing sector use the term "benchmark"
in their names. This is argued to support its assertion that Complainant does
not have exclusive rights in the term "Benchmark" and that Respondent
may continue to legitimately use the name "BenchMark Jobs".
Respondent denies that it registered and used the disputed domain name in bad
faith. Respondent appears to deny the allegation that it offered to sell the
disputed domain name by a general denial of allegation. While Respondent expressly
denies three of the four bases for a finding of bad faith under paragraph 4(b)
of the Policy, it does not expressly set forth such a denial in respect to the
ground of offer to sell in paragraph 4(b)(i) of the Policy.
Respondent request that the Panel deny the findings and remedy requested by
Complainant.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy")
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, (with implementing documents approved on October 24, 1999),
is addressed to resolving disputes concerning allegations of abusive domain
name registration The Panel will confine itself to making determinations necessary
to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy, and the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
establish procedures intended to assure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary
to notify the Respondent of the filing of the complaint and initiation of these
proceedings. Respondent has filed a detailed response to the complaint indicating
that it received notice and was afforded an adequate opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established
by a Complainant to merit a finding that a Respondent has engaged in abusive
domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) Respondent’s domain name has been registered and is being used in bad
faith.
Each of the aforesaid three elements must be proved by a complainant to warrant
relief.
Complainant is the holder of a service mark registration for the term "BENCHMARK
STAFFING SERVICES" in the United States and is using that mark in commerce
in connection with providing employee staffing services (see Factual
Background, supra). Complainant’s registration of the "BENCHMARK
STAFFING SERVICES" mark on the Principal Register at the USPTO establishes
a presumption of its validity in U.S. law. (Footnote
2) The Panel determines that Complainant has rights in the service mark
"BENCHMARK STAFFING SERVICES". Based on the April 22, 1997, date of
registration of that mark submitted in this proceeding, and without prejudice
to whether Complainant may hold earlier-arising rights in the mark, the Panel
determines that Complainant’s rights in the "BENCHMARK STAFFING SERVICES"
mark arose prior to Respondent’s registration, on August 30, 2000, of the disputed
domain name.
Complainant has applied to register the service marks "BENCHMARK"
and "BENCHMARK SPECIALIZED PRODUCTION STAFFING" at the USPTO. Applications
for registration do not establish rights in marks, or presumptions in favor
of applicants. (Footnote 3) There is insufficient
evidence on the record of this proceeding to establish that the term "BENCHMARK"
standing alone is sufficiently distinctive or has established a sufficient secondary
meaning to be associated exclusively with Complainant. The Panel will therefore
confine its analysis of confusing similarity to Complainants registered "BENCHMARK
STAFFING SERVICES" mark and the disputed domain name.
Respondent has registered the domain name <benchmarkjobs.com>. The use
of the generic top-level domain (gTLD) ".com" is without legal significance
from the standpoint of comparing the disputed domain name to "BENCHMARK
STAFFING SERVICES" since use of a gTLD is required of domain name registrants
and ".com" does not serve to identify a specific enterprise as a source
of goods or services. (Footnote 4)
The principal issue in this administrative proceeding is whether, taken as
a whole, the name "benchmark jobs" is confusingly similar to the mark
"benchmark staffing services". The Panel notes that the U.S. Court
of Appeals for the Federal Circuit has cautioned against a mechanistic application
of a "dominant portion" test in determining likelihood of confusion,
and has indicated that comparisons should be based on the entirety of a mark
and allegedly infringing terms. (Footnote 5)
In terms of sound, appearance, connotation, and commercial impression, (Footnote
6) the Panel determines that the terms "benchmark jobs" and "benchmark
staffing services" are confusingly similar. Both use the term "benchmark"
that is at most suggestive of employee staffing services.(Footnote
7) Because the term "benchmark" is not commonly associated with
employee staffing services, the relevant public familiar with that services
sector would likely associate the term "benchmark" with the enterprise
that is known under the "benchmark staffing services" mark. The terms
"staffing services" and "jobs" are essentially synonymous
when used in connection with businesses providing employee staffing services.
"Jobs" is indicative of employment or offers of employment, as is
"staffing".
Respondent has used the disputed domain name <benchmarkjobs.com> directly
in the line of commerce served by Complainant. This magnifies the likelihood
of confusion between a website identified by the disputed domain name and a
website identified by Complainant’s mark (i.e., <benchmarkstaffing.com>).
Complainant has met the burden of proving that Respondent is the registrant
of a domain name that is identical or confusingly similar to a service mark
in which the Complainant has rights, and it has thus established the first of
the three elements necessary to a finding that Respondent has engaged in abusive
domain name registration.
The second element of a claim of abusive domain name registration is that the
respondent has no rights or legitimate interests in respect of the domain name
(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which
a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence presented,
shall demonstrate your rights or legitimate interests to the domain name for
purposes of Paragraph 4(a)(ii)
(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." (Policy, paragraph 4(c))".
Respondent asserts legitimate rights or interests in the disputed domain name
based on its claim to maintain rights to operate a business under the name "BenchMark
Jobs". However, Respondent registered the disputed domain name at a time
when Complainant already operated its commercial "Benchmark Staffing Services"
website. An Internet search would have revealed the presence of a competitive
business with a confusingly similar name. Respondent had some minimal obligation
to avoid adopting Complainant’s mark in light of the directly competitive nature
of its activities, whether or not the fact of Complainant’s service mark registration
standing alone constituted constructive notice of its mark. Moreover, Respondent
was notified of Complainant’s objection to use of its mark promptly upon commencement
of Respondent’s use, and Respondent thereupon changed the name of its business.
Although Respondent has stated that it is currently maintaining a business under
the name "BenchMark Jobs", no evidence of such activity was presented
to the Panel, and the website to which the disputed domain name is redirected
uses the name "Interactive Staffing" with no reference to "BenchMark
Jobs". If Respondent was in fact operating a business under the name "BenchMark
Jobs" it should have furnished evidence of that to the Panel. Respondent
has not established that it is using or that it prepared to use the disputed
domain name in connection with a bona fide offering of services prior to notice
of a dispute.
Respondent has failed to establish rights or legitimate interests in the disputed
domain name. Thus, Complainant has established the second element necessary
to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but
without limitation," be evidence of bad faith (Policy, para. 4(b)). Among
these circumstances are: (1) that the domain name has been registered or acquired
by a respondent "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 [respondent’s] documented out-of-pocket
costs directly related to the domain name" (id., para. 4(b)(i)),
and; (2) that a respondent "by using the domain name, … [has] intentionally
attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s]
web site or location of a product or service on [its] web site or location"
(id., para. 4(b)(iv)).
In the present proceeding, Respondent is using the disputed domain name that
is confusingly similar to Complainant’s mark and website name to direct Internet
users to a website offering competing services. There is no explanation or disclaimer
on Respondent’s website home page that seeks to dispel the confusing use of
Complainant’s mark. The Panel determines that Respondent has intentionally attempted
to attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s mark as to sponsorship or affiliation
with its website. This constitutes bad faith within the meaning of paragraph
4(b)(iv) of the Policy.
Having made this determination, the Panel need not consider the other grounds
of bad faith asserted by Complainant.
Complainant has established the third and final element necessary for a finding
that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain name
<benchmarkjobs.com> to the Complainant.
7. Decision
Based on its finding that the Respondent, Benchmark Jobs, LLC , has engaged
in abusive registration and use of the domain name <benchmarkjobs.com>
within the meaning of paragraph 4(a) of the Policy, the Panel orders that
the domain name <benchmarkjobs.com> be transferred to the Complainant,
Benchmark Staffing, Inc.
Frederick M. Abbott
Sole Panelist
