WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Browns Canyon Corporation, Management Recruiters International, Inc. v. Ron Hana

Case No. D2003-0492

 

1. The Parties

The Complainant is Browns Canyon Corporation, Management Recruiters International, Inc., Cleveland, Ohio, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP of United States of America.

The Respondent is Ron Hana of New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <mrigrammercy.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 24, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 24, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2003. 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 June 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 23, 2003.

The Center appointed Richard Hill as the sole panelist in this matter on July 29, 2003. 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

Complainant, through its related companies, including franchised offices, and predecessors in interest and title, has for many years been engaged and continues to be engaged in employment agency services. The company is well-known and has a strong reputation.

Complainant has used and continues to use the US registered trademarks MRI and MANAGEMENT RECRUITERS for its employment agency services. The mark MRI has been in use since at least 1983.

Complainant has company-owned offices and franchised offices engaged in rendering employment agency services under the registered MRI and Management Recruiters marks throughout the United States, including Management Recruiters of Gramercy, Inc.

Many of the Complainantís franchisees maintain websites with names composed of the letters MRI followed by a geographical place name, for example, <mrisanjose.com>.

Respondent registered the contested domain name <mrigrammercy.com> on December 16, 2002.

Complainant has sent several cease and desist letters to Respondent, asking for transfer of the contested domain name. Respondent has not discontinued its use of the Complainantís marks or of the contested domain name.

 

5. Partiesí Contentions

A. Complainant

The <mrigrammercy.com> domain name, which is owned by Respondent, is essentially identical and confusingly similar to a Complainantís mark for MRI in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the <mrigrammercy.com> domain name. Indeed, Respondent is merely using Complainantís MANAGEMENT RECRUITERS and MRI marks to falsely portray itself as the franchisee of Complainant in the Gramercy neighborhood in New York City. Given the common practice of Complainantís franchiseeís using domain names that combine the MRI mark with a specific geographical reference, it would be reasonable for an Internet user to believe that Respondent is in fact a franchisee of Complainant.

It is Complainantís position that the <mrigrammercy.com> domain name was registered and is being used in bad faith because Respondent is clearly trying to divert consumers by misleading them into thinking that Respondent is one of Complainantís franchisees and to divert the prospective customer from its actual related company, Management Recruiters of Gramercy, Inc.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The panel will first address the procedural issues related to the fact that the Respondent has defaulted and then analyze the evidence to determine whether the Complainant has proven, in accordance with paragraph 4(a) of the Policy that:

a) The contested domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
b) The respondent has no rights or legitimate interests in the contested domain name; and
c) The respondent registered and used the contested domain name in bad faith.

I. The Procedural Issue Related to the Default of the Respondent

Since the Respondent has defaulted, this panel must first determine what the procedural implications are of a default. Should the Complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?

While the Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, paragraph 4(a) of the Policy states:

"In the administrative proceeding, the complainant must prove that each of these three elements are present." [emphasis added]

This panel therefore holds that it cannot grant the claimantís request automatically, but that it must instead examine the evidence presented to determine whether or not the Complainant has proven its case as required by the Policy.

II. Analysis of the Evidence in this Case

A. Identical or Confusingly Similar

Respondentís <mrigrammercy.com> domain name only differs from Complainantís MRI mark in that Respondent added the geographical descriptor of GRAMMERCY, a common misspelling of Gramercy Park in New York City.

Previous panel decisions clearly establish that the mere addition of a geographical term or indicator to a partyís trademark or service mark in a domain name is not enough to defeat a confusingly similar argument. See for example Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (May 2, 2000, <walmartcanada.com>), Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (January 22, 2001, <ikeausa.com>).

The panel holds that the disputed domain name is confusingly similar to the Complainantís registered trademark MRI.

B. Rights or Legitimate Interests

Complainant has presented evidence and argued convincingly that, given the reputation of Management Recruiters International, it is hard to understand how the Respondent could have any rights or legitimate interests in the contested domain name.

While the offering of employment services on the web is of course perfectly legal and constitutes a bona fide offering of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a "bona fide" offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for site in question, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be "bona fide".

This panel holds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

Complainant has presented evidence and argued convincingly that, given the reputation of Management Recruiters International, Respondent registered and is using the disputed domain name intentionally to divert to itself business that would otherwise be directed to the Complainantís franchisee Management Recruiters of Gramercy.

This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

This panel holds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the contested domain name in bad faith.

 

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, <mrigrammercy.com> be transferred to the Complainant.

 


 

Richard Hill
Sole Panelist

Date: August 1, 2003