CareerBuilder, LLC v. David Ausman/ Moniker Privacy Services
Case No. D2006-1621
1. The Parties
The Complainant is CareerBuilder, LLC, of Chicago, Illinois, United States of America, represented by Latham & Watkins LLP, United States of America.
The Respondents are David Ausman, of Jawa Timur, Indonesia, and Moniker Privacy Services, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <careerbuilde.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006. On December 22, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. The request was renewed on January 5, 9 and 12, 2007. On January 12, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that David Ausman was listed as the registrant and providing the contact details for the administrative, billing, 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 January 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2007.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on February 16, 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. Factual Background
The Complainant is an on-line employment recruiting agency and provider of related services that has conducted its activities since May 1996 under the name CAREERBUILDER. It conducts these activities online under the domain name <careerbuilder.com>. The Complainant holds several trademarks throughout the world, in particular:
Country Mark Reg. No. Reg. Date
(1) United States CAREERBUILDER 2,082,443 7/22/1997
(2) United States CAREERBUILDER.COM 2,823,227 3/16/2004
(3) European Union CAREERBUILDER 001,199,363 6/08/1999
(4) Mexico CAREERBUILDER 640,961 1/31/2000
(5) Canada CAREERBUILDER 548’113 7/13/2001
On August 27, 2006, David Ausman registered <careerbuilde.com>, an employment related website that redirects its users to <job---search.info>, a portal website.
On November 15, 2006, several e-mails were exchanged between the Parties. The Complainant first sent a cease and desist letter on that date to David Ausman, who replied the same day that he knew “there will be legal action for this TM infringment, [sic] but Im [sic] just reluctant to give it [sic] for free”. The Complainant sent a second e-mail that same day to inform David Ausman that it would take further action if the latter did not relinquish the domain name by November 21, 2006. Ausman replied that he “would be more than happy to transfer the domain name to you on the proviso that the out of pocket expenses to the sum of $2’200 (the price I paid for) are covered”.
On November 16, 2006, the Complainant once again requested Ausman to transfer the disputed domain name and offered him USD 200 to reimburse his reasonable out-of-pocket costs associated with the transfer. Ausman dismissed that offer and declared that “I did violate your TM, and I know that I am entitled to zero $$$ compensation. But your company does not show any effort in protecting CareerBuilder.com TM by throwing a few bucks a year to grabs [sic] all those possible misspelling. You wait till other people grab them from online auction and then want to take it back for a mere $200. I take it from Snapnames.com, why don’t you take legal action against them for selling TM domains? […] If that is what I will get at most, I will wait for legit [sic] WIPO mail. In the end, I will still end up giving you the domain without compensation. I prefer to give it for free instead of $200!”.
On November 24, 2006, the listed registrant of record for <careerbuilde.com> was Moniker Privacy Services. On January 12, 2007, it was once again reverted to David Ausman.
On December 20, 2006, the Complainant filed the present Complaint. On December 21, 2006, David Ausman sent a final e-mail to the Complainant, asking for what he should do. The Complainant once again requested Ausman to agree to transfer the domain name in its favour. The domain name has not been transferred.
5. Parties’ Contentions
A. Complainant
(a) The Complainant first contends that the disputed domain name is confusingly similar to its CAREERBUILDER trademarks. The deletion of the last “r” should be considered as a “typographical error” case where the domain name is found to be confusingly similar.
(b) The Complainant then asserts that the Respondents do not have any rights or legitimate interests in the domain name:
- Ausman himself admits it by stating that he “violate[s] [Complainant’s] TM, and […] know[s] that [he is] entitled to zero $$$ compensation”.
- Complainant has clear priority as its trademark registrations and applications predate Respondents’ initial registrations of the disputed domain name.
- Respondents have no connection or affiliation with Complainant and did not receive any license or consent, express or implied, to use the CAREERBUILDER mark in a domain name or any other manner.
- Respondents’ intent to misleadingly divert consumers to a competitive job search website tarnishes the Complainant’s trademarks and does not amount to a legitimate non-commercial or fair use of the Complainant’s marks.
(c) The Complainant finally affirms that Respondents’ use and registration of the domain name are in bad faith.
- The Respondents knew of and sought to capitalize from the fame and value of the Complainant’s trademarks by creating an employment-related website in direct competition with the Complainant.
- The disputed domain name redirects to <job---search.info> and ultimately resolves to a page containing links to Complainant’s direct competitors.
- Ausman himself admits that he was infringing the Complainant’s trademarks and would finally have to transfer the domain name.
B. Respondent
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of the Respondents’ failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Procedural issue
The Complaint was filed against both David Ausman and Moniker Privacy Services as Respondents. The evidence submitted to the Panel demonstrates that the disputed domain name was initially registered on August 27, 2006 by David Ausman. On November 24, 2006, the listed registrant of record was Moniker Privacy Services. Based upon the power conferred by the Rules, paragraph 10(a), the Panel however noticed on the WHOIS database that the domain name had once again changed on January 12, 2007 back to David Ausman, i.e. apparently at the time the Registrar finally responded to the Center’s verification request.
While the circumstances surrounding the changes in listed registrant identity remain unclear, the facts surrounding the case - that shall be referred to hereafter - clearly indicate to the Panel that David Ausman is the real and sole owner of the domain name. The e-mail he sent on December 21, 2006 to the Complainant asking for what he should do, at a time when Moniker Privacy Services was listed as the registrant for the domain name, confirms it.
Based upon what precedes, the Panel shall refer to David Ausman as “the Respondent” in the next paragraphs.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Though not identical, there is no doubt that <careerbuilde.com> is confusingly similar to the Complainant’s CAREERBUILDER trademarks.
The domain name at dispute falls into the category of typosquatting, i.e., the use of misspelling trademarks so as to direct users who would make a typographical error to another website other than the one of the right holder (Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441). As explained by a prior panelist, “[t]he removal of the last letter […] is so minor as to indicate a deliberate attempt to avoid using a mark virtually identical to many of [c]omplainant’s marks, and at the same time to be close enough to [c]omplainant’s marks to cause Internet users seeking to reach [c]omplainant’s website to arrive instead at Respondent’s website as the result of an error” (Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd., WIPO Case No. D2004-0459).
Accordingly, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the Panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”
In this case, the Respondent does not bring any evidence that would demonstrate any right or legitimate interests in the domain name as the Respondent did not file a Response. More specifically, the Respondent does not demonstrate that:
(i) before any notice to it of the dispute, they used or made preparations to use the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent is commonly known by the domain name, even if they have acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
On the contrary, the evidence submitted clearly shows the opposite. First of all, there is no doubt for the Panel that the Respondent sought to use what is apparently a privacy service provider “Moniker Privacy Services”, presumably to obscure his own identity as registrant, on or around November 24, 2006, as a result of the cease and desist letter he had received from the Complainant that same day. For the reasons given above, the Respondent clearly appears as the sole owner of the domain name. The Respondent himself admits that he is infringing the Complainant’s trademarks and was expecting a certain amount in return for the transfer of the domain name to the Complainant. His own statements in his e-mail of November 16, 2006, leave no doubt upon his lack of rights or legitimate interests: “I did violate your TM, and I know that I am entitled to $$$ zero compensation”. A willful trademark infringement as in this case cannot lead to any right or legitimate interests in the domain name.
Consequently, the Panel agrees with the Complainant’s contentions and considers the Policy, paragraph 4(a)(ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
(a) To have registered the domain name in bad faith, the Respondent must have been aware of the existence of the Complainant.
There is little doubt that the Respondent was aware of the Complainant’s trademarks at the time he registered <careerbuilde.com> as the Respondent’s website includes a link to Complainant’s website.
(b) The usage in bad faith is evidenced by several circumstances in the present case:
First, the fact that the disputed domain name redirects to <job---search.info> and ultimately resolves to a page containing links to Complainant’s direct competitors obviously amount to a usage in bad faith. As stated by a prior Panel, “[u]se for a portal linking to websites of the Complainant’s competitors is […] one which seeks to profit from confusion with the Complainant (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).
Second, the Respondent himself stated that he knew there would be legal action but was reluctant to give the domain name away for free. In his following e-mails he demanded USD 2,200 to transfer the domain name before stating: “I prefer to give it for free instead of $200!”. While the Respondent argues in its e-mail of November 15, 2006, that this amount would only cover the price he paid for the disputed domain name, he does not submit any evidence that would confirm his assertions. More than that, his e-mail of November 16, 2006, in which he recognizes to have willfully infringed the Complainant’s TM and his refusal to transfer the domain name “for a mere $200”, confirms the Respondent’s request exceeded his out of pocket expenses.
The explanations given above as to the absence of any right or legitimate interests in the domain name are also substantial evidence of the Respondent’s bad faith. This will not come as a surprise to the Respondent who even agrees that “I know I will have to transfer the domain name to you in the end”. While this mere assertion is no reason to allow the transfer of the domain name, the evidence submitted to the Panel by the Complainant clearly demonstrates the Respondent’s bad faith and the Panel finds:
(i) The Respondent has registered the domain name primarily for the purpose of selling the domain name to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the registration (Policy, paragraph 4(b)(i)).
(ii) The Respondent has registered and uses <careerduilde.com> to capture Complainant’s actual or potential customers and divert them to unauthorized websites that are not sponsored or endorsed by or affiliated with the Complainant (Policy, paragraph 4(b)(iv)).
For these reasons, the Panel finds that Policy, paragraph 4(a)(iii), has been satisfied.
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 <careerbuilde.com> be transferred to the Complainant.
Philippe Gilliéron Sole Panelist
Dated: February 25, 2007
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