Recruitech, Inc. v. Mark, Segal, Namegiant Limited
Case No. D2008-1282
1. The Parties
The Complainant is Recruitech, Inc., of Pennsylvania, United States of America, represented by White and Williams LLP, United States of America.
The Respondent is Mark, Segal, Namegiant Limited, of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <recruitek.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2008. On August 22, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name at issue. On August 22, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response, indicating that the Respondent identified in the Complaint was not listed as the registrant and providing the contact details for the Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 4, 2008. The Center verified that the Complaint together with the amendment to 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 September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 1, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 8, 2008. 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.
As the Respondent did not file any Response, the Panel has checked the record to ensure that the Center has complied with its responsibilities under Paragraph 2(a) of the Rules in respect of the notification of the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
4. Factual Background
The following summary of the facts is taken from the uncontested statements in the Complaint.
The Complainant
The Complainant operates worldwide in the field of human resources, providing staffing solutions predominantly for the pharmaceutical and biotech industries. It is the registered proprietor of the word mark RECRUITECH in the United States of America, the registration having effect from June 2001. It is also the proprietor in the United States of America of the word mark RECRUITECH INTERNATIONAL, also registered with effect from June 2001. The two marks are also registered trade names.
The Complainant operates a website at “www.recruitech.com”, on which it accepts resumes from applicants, and posts job listings to attract applicants.
The Complainant has actively used (and continues to use) its trademarks in connection with its staffing solutions business in the United States of America, the United Kingdom, and other countries. It has done so since 1997.
The Respondent and the Domain Name
The Domain Name was registered on August 9, 2004. It resolves to an advertising website at “www.information.com”. The Domain Name itself is not mentioned on this website.
According to the Complaint, the Respondent describes itself as one of the largest domain name brokers in the world.
The Respondent has previously registered and used domain names in bad faith. The Complaint refers to the following cases in support of that assertion:
Pre-Commencement Correspondence between the parties
The Complainant's representative sent a cease and desist letter to the Respondent on June 6, 2008, advising the Respondent of the Complainant's RECRUITECH trademark, and demanding a transfer of the Domain Name to the Complainant. The Respondent replied by email on June 7, 2008. In the reply email, the Respondent asserted that there were a number of other companies already using the mark “recruitek”, and that if the Complainant were to succeed with a complaint under the Policy, it would then be obliged to surrender the Domain Name to one of these other companies (as the Complainant would be infringing the other company's rights – “exactly what they claim we are doing”).
The Respondent's email included the following statement:
“If one of the companies using the mark “Recruitek” approach us, then of course we will talk to them, but your clients do not have any rights to the “recruitek” trademark over and above the companies using the name “recruitek” - as much as they do not have any rights to the mark “recruitech”.
The Respondent's email also said:
“I'd sooner gift [the Domain Name] to one of the companies using the mark “recruitek” rather than allow your clients to attempt to intimidate us into giving them something that they do not own nor have any rights to”.
The Respondent then offered the following explanation for the “information.com” webpage to which the Domain Name resolves:
“this is a parking page automatically generated by the registrar so you are wasting your time there.”
The Respondent's email did not suggest that the Respondent was unaware of the Complainant and its marks when the Domain Name was registered, nor did it name any of the alleged third party users of a “recruitek” mark.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the RECRUITECH or RECRUITECH INTERNATIONAL marks in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(a) The Complainant is not aware of the Respondent making any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
(b) The Respondent has not been commonly known by the Domain Name.
(c) The Respondent is only using the Domain Name to divert consumers to an advertising website. The Respondent is not thereby making a legitimate non-commercial or fair use of the Domain Name - merely redirecting mistaken typists to other websites is insufficient to create a legitimate use, without a significant connection between the Domain Name and the redirected site. The Respondent's practice of redirecting users to another site after typing in the Domain Name prevents those users from understanding that they have made a typographical error.
3. The Domain Name was registered, and is being used, in bad faith:
(a) Typo-squatting is sufficient per se to establish registration and use in bad faith (SurePayroll Inc. v. Web Advertising, Corp.,
WIPO Case No. D2007-0470). Use of a domain name to divert users to unrelated advertisements is classic bad faith use (Backstreet Productions, Inc. v. John Zuccarini,CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol,WIPO Case No. D2001-0654).
(b) Misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy, where the Respondent has used the misspelled name to attract Internet users to its website for commercial gain (Wachovia Corporation v. Peter Carrington,
WIPO Case No. D2002-0775).
(c) The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or to one of its competitors, for valuable consideration in excess of the Respondent's out-of-pocket expenses.
(d) The fact that an active website does not exist at the site to which the Domain Name points does not mean that the Domain Name has not been “used” (Royal Bank of Canada v. Namegiant.com,
WIPO Case No. D2004-0642).
(e) This case represents a continuation of the Respondent's bad faith practice of registering and holding domain names in an effort to profit from the resale of Domain Names which it never intended to use.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant has to prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved that it has rights in the registered mark RECRUITECH in the United States of America. That is sufficient proof of a “right” for the purposes of paragraph 4(a)(i) of the Policy. The only remaining question in this part of the Complaint is whether the Domain Name is confusingly similar to that registered mark.
The Panel is satisfied that it is. Visually, the Domain Name is very similar to the Complainant's mark – the only differences appear to be that the last two letters of the Complainant's RECRUITECH mark have been changed to a “k” in the Domain Name, and the suffix “.com” appears in the Domain Name. Numerous Panel decisions have held that the suffix is generic, and not to be taken into account in the comparison.
Phonetically, the Domain Name (minus the suffix) is identical to the Complainant's mark. Furthermore, the dominant parts of both the Complainant's mark and the Domain Name convey the impression, or idea, of recruitment, or recruiting, in “technical” industries.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's RECRUITECH mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
“A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant's mark, and the Complainant has not authorized the Respondent to use its mark (or any confusingly similar expression), whether in a domain name or otherwise. There is nothing in the record to suggest that the Respondent is commonly known by the Domain Name, and such use as the Respondent has made of the Domain Name (pointing it to an advertising, or landing, website) appears to have been of a commercial nature, so that paragraph 4(c)(iii) of the Policy could have no application.
Those matters in combination are sufficient for the Complainant to have made out a prima facie case, so that the evidentiary burden shifts to the Respondent. As the Respondent has not discharged that evidentiary burden, the Complainant must succeed on this part of its Complaint. However, the Panel notes for completeness that on the evidence which has been produced, there could be no question of the Respondent having a right or legitimate interest under paragraph 4(c)(i) of the Policy. Essentially for the reasons which are set out in the next section of this decision, the Panel finds that such use as the Respondent has made of the Domain Name has not been bona fide. Accordingly, the Respondent could not have availed itself of the safe harbor provisions of paragraph 4(c)(i) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These circumstances include:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is also satisfied that the Respondent has registered and used the Domain Name in bad faith. The Panel has come to that view for the following reasons:
1. The Domain Name is almost identical to the Complainant's RECRUITECH trademark, and the Respondent has not been authorized to use the Complainant's mark (or any similar expression).
2. The Panel finds, on the balance of probabilities, that the Respondent was aware of the Complainant and its mark when the Respondent registered the Domain Name. First, the Domain Name is phonetically identical to the RECRUITECH mark, and conveys precisely the same impression or idea. Secondly, the Complainant operates in the United Kingdom of Great Britain and Northern Ireland where the Respondent resides or carries on business, and it had been trading in that country for some 7 years before the Domain Name was registered. The Complainant also operates a website at “www.recruitech.com”. Thirdly, it appears that the Respondent is a very experienced trader in domain names, and carries on business in a country where English is the main language. The Respondent would certainly have been well aware of the meaning of the English word “recruit”, and the abbreviation “tech”, and the expression “tek” is fairly obviously the phonetic equivalent of “tech”. It seems improbable that an experienced domain name trader, being keenly interested in the values of the domain names it acquires (both with a view to profit on online-sales, and to the domain names' potential to generate pay-per-click advertising revenue), would not have turned its mind to whether some third party had already registered “www.recruitech.com”, and taken steps to ascertain who that party was. Finally under this head, the Respondent has not denied that it was aware of the Complainant when it registered the Domain Name. There has been no Response to the Complaint, and the email of June 9, 2008 did not contain any such denial. The Respondent appears to be not inexperienced in proceedings under the Policy, and it would have appreciated the importance of placing on record its lack of knowledge of the Complainant if such had been the case.
In the absence of any response, the combination of circumstances just described is more than sufficient for the Panel to conclude that the Respondent was aware of the Complainant and its mark when the Respondent registered the Domain Name.
3. The Respondent has apparently owned the Domain Name since August of 2004, but has still not pointed the Domain Name to any website through which a bona fide business is conducted. The Domain Name just to points to a landing page site, with click-through links to third party sites. Nor is there any apparent connection between the text of the Domain Name and the “use” to which the Domain Name is presently being put. As the Complainant points out, the expression <recruitek.com> is not even mentioned on that website. In the absence of any response, the Panel concludes that the Respondent had no intention to use the Domain Name for any business or other bona fide purpose.
4. The Respondent has failed to put forward any reason for its choice of the Domain Name. In the absence of any explanation from the Respondent, the Panel infers that the Respondent chose the Domain Name because of its similarity to the Complainant's mark, with a view to either (i) attracting Internet users to the advertising site to which the Domain Name resolves, who were looking for sites associated with the Complainant; or (ii) selling the Domain Name to the Complainant or to one of its competitors (a possibility raised overtly by the Respondent in its email dated June 7, 2008) at a profit. (The Respondent is in business as a domain name broker, so it would not sensibly have acquired the Domain Name for the purpose of resale, if it did not intend to make the resale at a profit.)
5. In the absence of any Response, the Panel concludes that the Respondent registered and has used the Domain Name for one or both of the bad faith purposes described at paragraphs 4(b)(i) and 4(b)(iv) of the Policy. First, the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant (or to a competitor of the Complainant), at a price exceeding the Respondent's out-of-pocket costs directly related to the Domain Name. Pending such resale, the Respondent used the Domain Name to attempt to attract Internet users to the website “www.information.com”, for commercial gain, by creating a likelihood of confusion with the Complainant's mark, as to the source, sponsorship, affiliation, or endorsement of that website.
6. The Panel's conclusions on the bad faith issue are reinforced by the previous panel decisions cited by the Complainant, in which the Respondent has been found to have registered and used domain names in bad faith. Some of the bad faith findings in those other decisions have been findings of bad faith under paragraph 4(b)(i) of the Policy; others have been based on bad faith under Paragraph 4(b)(iv).
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, <recruitek.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: October 22, 2008
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