WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Publishing Company v. Perfect Entry
Case No. DBIZ2002-00137
1. The Parties
The Complainant is Trader Publishing Company, P.O. Box 2576, Norfolk, Virginia 23501, United States of America, represented by Ms. Judith A. Powell of Kilpatrick Stockton LLP, Atlanta, Georgia, United States of America ("Complainant").
The Respondent is Perfect Entry, Postbus 441, Vianen, 4130 EK, the Netherlands ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name <careerweb.biz>.
The Registrar is Ascio Technologies, Inc, Copenhagen, Denmark.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís STOP Complaint in electronic form on April 26, 2002, and in hard copy on April 30, 2002.
The Center verified that the Complaint was filed in accordance with the requirements of the Start-up Trademark Opposition Policy for .biz ("the STOP Policy"), the Rules for Start-up Trademark Opposition Policy ("the STOP Rules"), and the WIPO Supplemental Rules for the Start-up Trademark Opposition Policy for .biz ("the WIPO Supplemental STOP Rules").
On May 13, 2002, the Center transmitted the Notification of STOP Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent. The Center advised that (1) the Respondentís STOP Response was due by June 2, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on June 4, 2002.
On June 7, 2002, the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on June 12, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules.
The Administrative Panel shall issue its Decision based on the STOP Complaint, the STOP Policy, the STOP Rules, the WIPO Supplemental STOP Rules and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant is the owner of the US trademark registration No 1 929 636 "CAREERWEB", filed on September 22, 1994, and registered on October 24, 1995, for services in Intl. Class 35. Assignment of the registration to the Complainant was recorded by the United States Patent and Trademark Office on February 17, 1999, (copies of the Certificate of Registration and Notice of Recordation of Assignment Document are provided as Annex C of the complaint).
The Complainant and its affiliates have used the "CAREERWEB" mark since at least August 1994 to provide employment opportunity, recruitment and relocation information online, featuring its offerings under the said mark at its <careerweb.com> site (Annex E).
According an Affidavit (Annex G) of Mr. George P. Brooks, Executive Vice President of Trade Publishing Company, the site has been the subject of extensive and widespread marketing and publicity, currently listing on average 16 344 jobs available per week and posting on average 28 750 resumes per week from individuals all around the world. The site experiences an average of over 1 190 000 page views per week.
The Respondent registered the Domain Name on March 27, 2002, (Annex A of the Complaint).
No detailed information is provided about the Respondentís business activities, apart from what is mentioned below by the Complainant.
5. Partiesí Contentions
The Complainant states that its trademark registration for "CAREERWEB" is incontestable, presumptively strong and entitled to an expansive scope of protection.
The Domain Name is identical to the said trademark.
The Complainant further states that the Respondent has no rights or legitimate interests in the Domain Name, which was registered more than seven years after the Complainantís first use of the trademark. The Respondent has not previously done business under the name "Careerweb", and a search of online records does not reveal any corporate, partnership or fictitious business name listing or trademarks for "Career Web" or "CareerWeb" under Respondentís name or contact information. There is no evidence that the Respondent is commonly known by "CareerWeb" or similar.
The Complainant argues that the Respondentís lack of any previous legitimate use of the Domain Name is made clear by the fact that the Domain Name is registered under the business name "Perfect Entry."
The Complainant reasonably believes that the Respondent was aware of the Complainantís <careerweb.com> domain name and website before it registered the Domain Name since the prior domain name would have appeared in the search for available domains, the active website was easily accessible to the Respondent and because of the widespread and long-standing marketing of Complainantís site.
The high quality of the site has been recognized by a number of companies involved in the employment industry, and has been the subject of articles published by Electronic Recruiting News, Weddles ("The Newsletter About Internet Resources for Successful Recruiting Retention"), and Career Roads, featured on the website <internetbiznet.com> and has also been named as "one of the Webís Best Sites" by Web100.com.
The Complainant concludes that Respondentís knowledge of the trademark "CAREERWEB" is an indicia of its bad faith, and refers to Ford Motor Company and Land Rover Ltd v. Institution , WIPO Case No. DBIZ 2001-00045.
Respondentís business is in the field of Internet portals and Internet development (according to its "under construction" website <perfect-entry.com>, provided as Annex I).
The Complainant further concludes that the Respondent registered the Domain Name in bad faith order to prevent the Complainant from reflecting its trademark in the corresponding .biz domain name, alternatively - as an Internet site developer - Respondent registered the Domain Name to sell it for valuable consideration in excess of Respondentís out of pocket costs directly related to the Domain Name, or with the intent of developing a site designed to compete with the Complainantís and designed intentionally to attempt to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainantís famous "CAREERWEB" trademark.
The Complainant requests, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
As mentioned above, the Respondent has not filed any Response.
6. Discussion and Findings
According to Paragraph 4(a) of the STOP Policy, the Complainant must prove each of the following:
(i) that the Respondentís Domain Name is identical 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 Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
1. Identical Trademark?
The "careerweb" part of the Domain Name <careerweb.biz> is identical to the Complainantís registered trademark "CAREERWEB".
2. No Rights or Legitimate Interest?
Based on the evidence, and in the absence of any Response, this Panel concludes that the Respondent has no rights or legitimate interest in the Domain Name.
3. Registered or Used in Bad Faith?
The Complainant is a US based company, whereas the Respondent seems to be based in the Netherlands.
However, there are several facts indicating that the Respondent was or at least should have been aware of the existence of the Complainantís trademark prior to the registration of the Domain Name:
Firstly, the "CAREERWEB" is a registered word mark. It is an invented word, somewhat suggestive, but nevertheless distinctive as a trademark for the services of the Complainant. "CAREERWEB" cannot be said to be a generally descriptive term. Furthermore, as stated in the affidavit (Annex G) Ė which the Panel has no reason to doubt Ė the Complainant has "continuously used the ĎCAREERWEBí mark since at least 1994 and has, through the expenditure of substantial time, effort, and money on marketing each year, built substantial brand recognition for the mark". As also stated in the affidavit, the Complainantís web site receives "resumes of individuals from all over the world", which likely includes Europe and presumably individuals from the Netherlands. Thus, the Panel finds that the trademark "CAREERWEB" is known outside the US.
Secondly, and according to the Respondentsí own web site (Annex I), the Respondent is an Internet (portals) developer. The Respondent has therefore presumably good knowledge of the Internet. The Panel finds it likely that Respondent not only known about the Complainantís trademark and site, but also registered the Domain Name with the Complainantís mark and services in mind.
The Domain Name is not yet in use, and there are no clear circumstances indicating that the Respondent registered the Domain Name primarily for the purpose of selling, etc the registration to the Complainant (Paragraph 4(b) i. and iv. of the STOP Policy). However, the Panel accepts as a fact that the Complainantís trademark is well known for certain services provided via the Internet and that the Respondent may well have plans to use the Domain Name for a competing service or similar, therewith taking unfair advantage of the goodwill pertaining to the Complainantís trademark.
The circumstances in this case indicates that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trademark in a corresponding .biz domain name and/or that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor (Paragraph 4(b) ii. and iii. of the STOP Policy).
The Panel concludes that the Respondent registered the Domain Name in bad faith.
The Panel concludes (a) that the Domain Name <careerweb.biz> is identical to the Complainantís trademark "CAREERWEB", (b) that the Respondent has no rights or legitimate interests in the Domain Name, and (c) that the Respondent has registered the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the Domain Name <careerweb.biz> be transferred to the Complainant.
P-E Petter Rindforth
Dated: June 25, 2002