WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CareerBuilder, Inc. v. John Zuccarini
Case No: D2002-0282
1. The Parties
The complainant is CareerBuilder, Inc., a company incorporated in the State of Delaware, United States of America, with its principal place of business located at 10780 Parkridge Blvd. Reston, Virginia, United States of America and represented by attorneys Michael T. Murphy and Mr. Mark Sparacino of Roylance, Abrams, Berdo & Goodman, L.L.P. in Washington DC, United States of America ("the Complainant").
The respondent is a Mr. John Zuccarini with listed addresses at 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, United States of America and Saffrey Square PO Box N-4149 Nassau, Bahamas. ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <carreerbuilder.com> ("the Domain Name"). The Registrar of the Domain Name is CSL GmbH d/b/a joker.com, Germany ("the Registrar").
3. Procedural History
A complaint has been submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 25, 2002, (hardcopy on March 28, 2002), pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Complaint").
The Center verified that this submission satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") .
On March 27, 2002, Acknowledgement of Receipt of Complaint was sent to the Complainant.
On March 28, 2002, a Request for Registrar Verification was transmitted to the Registrar and on April 2, 2002, the Registrar confirmed that the Domain Name <carreerbuilder.com> is registered with this Registrar and that the Respondent is the current registrant of the Domain Name.
On April 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent setting a deadline of April 29, 2002, by which the Respondent could submit a response to the Complaint.
The Respondent did not submit his response by said deadline nor has the Respondent asked for an extension of the period of time for filing his response.
On May 3, 2002, the WIPO Center sent a Notification of Respondent Default to the Respondent notifying him that he had failed to comply with the above-mentioned deadline to submit his Response.
On May 13, 2002, the WIPO Center sent a Notification of Appointment of the Administrative Panel to the parties, in which Mayer Gabay was appointed as Sole Panelist. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
On the basis of the documents submitted by the Complainant, the following facts can be established:
The Complainant is the owner of the following trademarks:
Country of Registry
July 22, 1997
December 11, 2000
January 31, 2000
July 13, 2001
December 21, 1999
November 12, 2000
September 14, 2001
January 31, 2000
The CareerBuilder Network
December 21, 1999
December 29, 1998
December 14, 2000
October 31, 2000
June 26, 2001
June 7, 2000
The Complainant is a well-known business, active in the online recruiting industry since 1996. The Complainant was a publicly traded company on the NASDAQ until the Fall of 2000, when is was bought by two large media firms, Tribune and Knight-Ridder.
The Complainant transacts its business on the internet through the domain name, <careerbuilder.com>. The Complainant also does business through the following domain names of which it is also the registrant:
The Complainant alleges that the Respondent has a history of registering misspellings of famous marks and has lost numerous policy decisions and US Court decisions and is currently violating a federal injunction prohibiting his practice of using misspellings of domain names to misdirect users to pornography.
While the Respondent has not submitted his Response, it is found that there are sufficient grounds to rule on the Complaint, based upon factual and legal findings that can be established to the satisfaction of this Panel.
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant’s trademark, and
(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.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4 (a)(iii) above.
5. Parties’ Contentions
5.1 The Complainant
In the Complaint, the Complainant alleges that the Respondent has intentionally registered the Domain Name as a misspelling of the Claimant’s mark with the aim of misleading consumers and capturing the Claimant’s traffic for Respondent’s own unauthorized monetary advantage.
The grounds for the complaint are:
(1) The Domain Name <carreerbuilder.com> is identical or confusingly similar to the "CareerBuilder" trademark in which the Complainant has rights.
(2) The Respondent has no rights or legitimate interest in respect of the Respondent’s trademarks as listed in Paragraph 4 above. The Respondent is not using the Domain Name in any manner other than as a method to misdirect consumers to another web site.
(3) The Domain Name was registered in bad faith as provided in Paragraph 4(a) (iii) in connection with the indications enumerated in 4(b) (particularly sub paragraph (iv)) of the Policy.
In the Complaint, the Complainant requests that the Domain Name be transferred to the Complainant.
5.2 The Respondent
No Response was submitted by the Respondent to the WIPO Center.
6. Discussion and Findings
6.1 Identical or confusingly similar
The Domain Name <carreerbuilder.com> is clearly confusingly similar to the Complainant’s Domain Name <careerbuilder.com>. The correct English spelling of the word "career" has one "r" in the middle. The addition of another letter "r" to create "carreer" takes advantage of a common misspelling of the word.
The Complainant’s "CAREERBUILDER" and a number of related names are registered trademarks. The first use of the mark "Careerbuilder" by the Complainant was in 1996, and it has been in continuous use by the Complainant since then.
The Respondent’s Domain Name is not a registered trademark nor would it be registered in any jurisdiction that prohibits registration of trademarks that lead to confusion in the market or create a risk of association with other previously requested or registered trademarks.
In light of the above and in the absence of a response by the Respondent it can be concluded that the Respondent’s Domain Name is not a legitimate mark either in Germany or in any of the other jurisdictions where the Complainant’s marks are registered.
6.2 Rights or legitimate interest
The Complainant has not licensed or permitted in any manner Respondent’s use of Complainant’s tradename and registered service mark "Careerbuilder ".
There is no commercial activity at the Domain Name address and the user is automatically forwarded to another internet address.
When internet users type in <carreerbuilder.com> they are directed to a pornographic website: http:www.amaturevideos.nl.
Thus there is no direct connection to the purpose of the Domain Name and its literal meaning. The user is directed to a site having nothing to do with either building or careers.
In view of the above, it can be concluded that the goal of the Respondent’s registration was to intentionally attract internet users interested in the Complainant’s web site for the Respondent’s own commercial gain.
6.3 Bad faith
Paragraph 4 (b)(iv) of the Policy establishes that there is evidence of bad faith if the disputed domain name is registered under circumstances indicating that the registration was done as an "attempt to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Respondent’s Domain Name was registered on April 17, 2000, after the Claimant’s marks had already enjoyed wide use for an extended period.
As discussed in 7.1 above, the Respondent’s Domain Name was almost identical and confusingly similar to the Complainant’s Domain Name.
The Respondent’s Domain Name is a misspelling of the Complainant’s CareerBuilder mark.
Not only does it appear that the Respondent intentionally created confusion but by registering the misspelling the Respondent impacted negatively on the Claimant’s web site. If the Respondent’s Domain Name did not exist then internet users would receive a message that no such web address could be accessed. In this case it is reasonable to suppose that many web users would quickly correct their spelling and access the Complainant’s site. However by misdirecting the consumer, the Respondent distracts and delays the consumer from his pursuit of the service being offered by the Complainant. Further the Respondent confuses the consumer with the possibility that there is a connection between the Domain Name and the Complainant’s business.
While it is not the role of this Panel to assess the effects on the Complainant, the obvious negative impact of the Domain Name to the Complainant’s business are further indications of bad faith on the part of the Respondent. The Respondent’s activities have the obvious potential for a number of negative effects on the Complainant’s business, including: 1. Diminish access to the Complainant’s web site; and 2. Create confusion between the Complainant’s commercial activities and those of the Respondent. A reasonable person may conclude that an unwanted association with pornographic web sites can impact unfavorably on the Complainant’s business and good name.
In light of the above, the Panel finds that by having registered the Domain Name, the Respondent has infringed a prior trademark right and it should be held that the Respondent acted in bad faith.
In light of the foregoing, the Sole Panelist finds that the Domain Name <carreerbuilder.com> at issue is confusingly similar to the Complainant’s trademark "CareerBuilder", that the Respondent has no rights or legitimate interest in respect of the Domain Name and the Domain Name has been registered and used in bad faith.
Consequently, the Sole Panelist decides that the Domain Name be transferred by the Registrar from the Respondent to the Complainant.
Dated: May 21, 2002
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