WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FabJob Inc. v. Compana LLC
Case No. D2006-0610
1. The Parties
The Complainant is FabJob Inc., Calgary, Alberta, Canada, represented by Christensen O’Connor Johnson Kindness, PLLC, United States of America.
The Respondent is Compana LLC, Carrolton, Texas, United States of America, represented by Shrull Altman LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fabjobs.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2006. On May 17, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On May 23, 2006, Compana LLC 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 May 31, 2006. 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 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was extended by consent of the parties to July 1, 2006. The Response was filed with the Center on July 2, 2006.
The Center appointed The Honourable Sir Ian Barker, QC, as the sole panelist in this matter on July 17, 2006. 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.
The Complainant filed an unsolicited request with the Center for leave to file a Reply. The Panel, whilst acknowledging that the filing of a Reply could delay the decision, agreed to the request on July 19, 2006, because the Respondent had alleged against the Complainant Reverse Domain Name Hijacking. The Respondent was given until July 23, 2006 to file any material purely in rebuttal of fresh material in the Complainant’s Reply.
The Complainant filed a Reply timeously. This document exceeded in length anything that the Panel had envisaged being filed as a Reply. The volume of the annexures was oppressive.
In May 2006, the Respondent commenced proceedings for a declaratory judgment, in the 134th District Court of Dallas County, Texas. The proceedings were not served on the Complainant, which was nevertheless aware of their issue. The suit related to the subject matter of the present proceedings under the Policy.
On July 21, 2006, the Respondent applied to the Texas Court for an order requesting suspension of the present domain name dispute. As a result of a request for briefing from the Judge, the parties requested by consent an extension of time for the Respondent to file its Rebuttal and a suspension of a final decision until August 7, 2006. The Panel agreed to this request. On August 4, 2006, at the request of the Complainant, the proceedings were removed into the United States District Court for the Northern District of Texas, Dallas Division. The Respondent duly filed its Rebuttal submissions on August 7, 2006.
The Panel accordingly proceeds to deal with the Complaint on the merits, in the absence of any Court order restraining the Complainant from prosecuting the present Complaint. The Panel has a discretion to decide whether to suspend or terminate the proceedings under the Policy or proceed to a decision. The Panel elects to give a decision on the basis of the material supplied to it. It should be noted, however, that the process under the Policy is no substitute for a full Court hearing where witnesses are examined.
4. Factual Background
The Complainant is the owner of registered trademarks for:
(a) FABJOB (US Reg. No. 2795637, first use in commerce December 11, 2000, filing date January 17, 2002, registration December 16, 2003); and
(b) “FABJOB.com from drab job to fabjob” with device (US Reg. No. 2917697, first use in commerce December 11, 2000, filing date January 17, 2002, registration January 11,2005).
The Complainant was formed in Canada in 1999 to offer career information and ‘how to’ books. Since 2001, it has spent heavily on advertising associated with its marks. Its website at its domain <fabjob.com> (registered on December 31, 1999) receives some 15 million visitors per year. The Complainant and its website have received extensive media coverage in Canada and the United States. The Complainant produced material to show media exposure in the period 2000-2002.
The Complainant has never given the Respondent any rights in respect of the disputed domain name.
The website accessed by the disputed domain name resolves to a portal website directing users, through a Google Adsense agreement, to links with employers seeking employees.
The disputed domain name was registered on June 2, 2002.
5. Parties’ Contentions
The Complainant’s marks are entitled to broad protection under US trademark law.
The disputed domain name is confusingly similar to the Complainant’s marks. The Respondent is ‘typosquatting’ by adding an ‘s’ to the Complainant’s mark.
The Respondent has no rights in the disputed domain name and does not come within Para. 4(c) of the Policy.
In the instant case, the Complainant has strong rights in the FABJOB marks because those marks consist of a fanciful, coined name, and because the Complainant has invested over a million dollars in promoting the marks. The simple addition of the letter “s” at the end of the mark, resulting in the subject domain name, is obvious typosquatting, and creates a likelihood of confusion with the Complainant’s registered trademarks.
The Respondent’s bad faith in registering the disputed domain name is evidenced in two ways.
First, paragraph 4(b)(ii) of the Policy provides that it is evidence of the registration and use of the domain name in bad faith if:
“You have registered the domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
The Respondent’s registration of a common typographical error of the Complainant’s mark prevents the Complainant from expressing its mark in a domain name. Therefore, the Respondent registered the subject domain name in bad faith pursuant to the Policy.
Secondly, Policy paragraph 4(b)(iv) provides:
“[b]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your Website or location or of a product or service on your Website or location.”
The Respondent publishes a portal website, which advertises, among other things, job referral services. These are referrals to the Complainant’s competitors. The Respondent committed these actions for the purpose of disrupting the business of the Complainant. The Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website:
The use of the disputed domain name in this manner trades upon the goodwill of the Complainant by creating a likelihood of confusion with the Complainant’s own marks and the disputed domain name as to the source, sponsorship, affiliation, or endorsement of the Website or location, as well as directing users who may have mistyped “fabjob” as “fabjobs” and found the Respondent’s portal site and links to the Complainant’s competitors.
The Respondent has evidenced that it wishes to prevent the Complainant and owner of the registered trademark FABJOB from reflecting this mark in a corresponding domain name. The Respondent’s hostile actions and flagrant infringement of the Complainant’s trademark further evidence bad faith registration and use.
The Respondent registered the disputed domain name in bad faith, with the knowledge that the Complainant owns the trademark and has superior rights. The Respondent is attempting to mislead the public for commercial gain while disrupting the Complainant’s business.
The Respondent expanded at length on the proposition that the Complainant has no enforceable rights under the Policy because its mark is generic or descriptive.
Descriptive and generic terms provide no rights under the Policy under any circumstances, even if they are registered. Goldberg & Osborne v. The Advisory Board Forum, Inc., WIPO Case No. D2001-0711 (“Serious question as to whether the [registered] mark [the personal injury lawyers] is enforceable” under the Policy because it “appears to be descriptive, if not generic.”) The name applies to unregistered marks, Successful Money Management Seminars, Inc. v. Direct Mail Express, supra (seminar and success are generic terms); Emoney Group, Inc. v. Eom., Sang Sik, NAF Case No. 96337 (emoney.com) (“Complainant has no legally protectable interest in the term “EMONEY” as this is a descriptive term that describes the characteristics and features of goods or services.”); Pet Warehouse v. Petwarehouse.com, WIPO Case No. D2000-0105 (pets and warehouse are generic terms); Interactive Television Corporation v. Noname.com, WIPO Case No. D2000-0358 (interactive television is generic); SOCCERPLEX, INC. . NBA Inc., NAF Case No. FA 94361. (soccerzone.com contains composite generic term not exclusively associated with Complainant). The links on the Respondent’s website accessed by the disputed domain name, are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. Generally, they are listings for employment opportunities and services that provide employment opportunities. The Complainant does not offer such services, but instead provides electronic and paper media providing self-help to those searching for a job.
The Respondent has no control over what terms advertisers bid at Google and what terms appear on the website. UDRP Panels have recognized that the domain name holder is not responsible for potentially offending content where they have contracts with third parties, such as Google or Yahoo, which control that content. Admiral Insurance Services v. Dicker, WIPO Case No. D2005-0241 (“the Panel accepts that the terms under which Google makes its Adsense advertisements available to not permit the Respondent to control them…”); Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. 206309 (“brief appearance of aviation links on respondent’s websites was automatically provided by a pay-per-click search engine provider…”).
The Respondent may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered. Eastbay Corporation v. VerandaGlobal.com, Inc., NAF Case No. FA0203000105983 (declining to transfer <finalscore.com> notwithstanding the Complainant’s incontestable federal registration for “Final Score”); Energy Source Inc. v. Your Energy Source, NAF Case No. FA96364 (respondent had rights and legitimate interests in domain where respondent showed the domain name was comprised of generic and/or descriptive terms). Indeed, common words and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis.” Zero International Holding GmbH v. Beyonet Services, WIPO Case No. D2000-0161; Miller Brewing Company v. Yunju Hong, NAF Case No. FA0309000192732; Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, supra; Churrascaria Porcao v. Prime Products International, WIPO Case No. D2001-0535.
The fact that advertising revenues may be generated by the Respondent’s activity demonstrates a legitimate interest. See GLB Servicos Interativos S.A. v. Ultimate Search Inc., WIPO Case No. D2002-0189.
In Eastbay Corporation v. VerandaGlobal.com, Inc.,(supra), the Panel said:
“Respondent is using the disputed domain name as a portal to a commercial website…which features various advertisements and links, including advertised links to various websites. The Panel finds that the Respondent, before notice of the dispute, has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy 4(c)(i).”
The Respondent herein, like the respondent in Eastbay Corporation, registered and began using the subject disputed domain for similar purposes, long before receiving notice of the present dispute, and prior to the date on which the Complainant secured a federal registration for its alleged mark.
The Respondent registered the disputed domain name because it believed it was a descriptive term to which no party had exclusive rights. It was a good domain name to use to help people looking for employment or employees. Respondent has also registered a number of other domain names with “job” for similar reasons. Examples include: <germanyjobs.com>, <fedjob.com>, <freelancejobs.com>, <policejobs.net>, <alljobs.com>, <careerjobs.com>, <clericaljobs.com>, <cooljobs.net,> <jobemployment.com>. This evidences Respondent’s good faith intent to register common generic words.
Where the mark is registered because of its meaning as a word or term, such use establishes the respondent’s legitimate interest. In The Landmark Group v. Digimedia L.P., NAF Case No. 285459, Respondent registered:
“Large numbers of dictionary words …. and generate[d] revenue by providing pay-per click advertising links related to the generic nature of each site’s domain name.” The panel held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy”.
The principle that mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels. As one such panel explained:
“Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy”, not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999).”Shirmax Retail Ltd v. CES Marketing, Inc., Case No. AF-0104 (e-Resolution March 20, 2000).
The Respondent did not register, and is not using, the disputed domain name in bad faith. The Respondent is in the business of providing locator services. The Respondent is not attempting to sell self-help guides to job seekers. Rather, the Respondent has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known, generic, descriptive, and geographically descriptive terms.
Where a mark is a common term with substantial third party use, as it is here, the Complainant must proffer evidence that demonstrates that the Respondent has specifically intended to confuse consumers seeking out the complainant. There is no such proof here. In Drew Bernstein and Kill City, Inc. dba Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706 (September 28, 2000) the panel explained:
“The term “lip service” used in the Respondent’s Domain Name is not an arbitrary or coined term nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation, which can be and is used in many commercial contexts… For this reason, the Panel finds that the evidence is insufficient to establish bad faith registration and use under Paragraph 4(b)(iv) of the Policy.”
The Respondent did not register the domain name to sell to the Complainant. While the Respondent has no problem with the Complainant’s continued use of its “www.fabjob.com” website, it does wish to prevent the hijacking of its own domain name. The Respondent seeks a declaration of reverse domain name hijacking against the Complainant.
On May 19, 2006, the Respondent filed the lawsuit in Texas seeking declaratory relief from the court that the Complainant’s accusations of trademark infringement and dilution are unsupported by fact and without merit. This suit will require extensive discovery and inquiries into ancillary matters outside the scope of the current proceeding.
The parties must be afforded the opportunity to engage in discovery and examine witnesses, to discern the facts and for the Respondent to obtain a fair adjudication to protect its rights in the disputed domain name. The Respondent requests the Panel to defer its decision to that of the Court so that a complete and final adjudication to this matter may occur. In the event that the Panel elects not to defer its decision, the Respondent requests a live hearing on this matter before the Panel, with an opportunity to cross-examine opposing witnesses under oath. Furthermore, as legal proceedings have been filed, the Respondent requests that any ruling for or against any party remain unpublished to avoid the creation of bias in potential jury panelists called to serve until after the conclusion of that litigation and any appeal therefrom.
C. Complainant’s Reply
The Complainant’s marks are properly protectable. It has built up substantial rights in them.
The Respondent has provided no evidence or testimony to counter the Complainant’s position that the Complainant’s mark is not used by competitors to describe a class of similar products, and has not been registered or used by any third parties. An Internet search for “fabjob” returns approximately 77,000 hits, all of which refer to the Complainant. Such use by third parties to refer only to the Complainant confirms the Complainant’s exclusive right to the mark. The Respondent has shown no evidence to suggest that any other competitor or entity has used or registered the FABJOB mark in connection with the Complainant’s same goods and services. No other marks incorporating the word “fabjob” have been registered with the U.S. Trademark Office.
The disputed domain name was registered subsequent to the selection and use of the Complainant’s own domain name and trademarks. As shown in the declaration of Ms. Goulet, the trademark FABJOB had been widely used and heavily promoted, and significant rights in the mark had been established by June 2, 2002. The Respondent has provided no evidence nor sworn statement to support its claim of reverse domain name hijacking.
The Respondent’s argument that the content of the site accessed by the disputed domain name is not under its control is unsubstantiated. It has neither explained its business nor provided a copy of any Adsense agreement. The Respondent’s ads on the disputed domain name do not appear in formats typical of Google Adsense partners.
The Respondent has merely suggested that, if it had an Adsense agreement with Google (which it has not confirmed), then there is some case support that implies that the Respondent might have less than full control. Job-related links have been listed on the Respondent’s website for some time, and the Respondent cannot claim it was unaware of the content of his website. The cases cited by the Respondent do not hold that domain name holders are not responsible for potentially offending planning guides and electronic books in the fields of self help, “how to”, and career planning via the Internet; conducting seminars in these fields.” By January 15, 2001, the Complainant had used the FABJOB marks in International Class 9 in connection with a CD-ROM containing an electronic book for use in the fields of self-help, “how to”, career planning and associated uses.
By early 2002, the Complainant had achieved substantial recognition in the marketplace through its online presence and advertising efforts. It was not until June 2, 2002, that the Respondent registered the disputed domain name. Later that year, the Complainant’s two FABJOB marks were published by the U.S. Trademark Office.
The Respondent has failed to show a legitimate interest in the domain name, and instead, confirmed that the domain name is used to attract for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark. The Respondent has shown no evidence of inability to control the content, layout, and design of its website. All indications are that the website is fully under the Respondent’s control and has been designed so as maximise the confusion and the financial benefit to the Respondent.
The Respondent’s filing of a lawsuit in connection with the domain name at issue should not be grounds for further prejudicing the Complainant.
D. Respondent’s Rebuttal
The Respondent maintains its right to use a common generic term despite the existence of the Complainant’s registered marks. Authority from the U.S. Supreme Court was cited against the:
“undesirability of allowing anyone to obtain a complete monopoly on the use of a descriptive term simply by grabbing it first.”1
The Respondent annexed its Google Adsense agreement which places limits on non-Google-sponsored advertising. It admits that it provided links to employers seeking employees.
The Respondent should not have been expected to anticipate that the founders of the Complainant – two sisters operating out of their home in Canada – would obtain trademark registration some 18 months after the Respondent had registered the disputed domain name.
The present proceedings should be stayed pending the resolution of the Court proceedings in Texas. Alternatively, the Panel should conduct a live hearing and delay publication of its decision to avoid prejudice to any jury panel.
6. Preliminary Matters Arising out of Submissions
(a) The Panel does not agree with the Respondent’s submission that mere ownership of a domain name – whether of a common term or not – creates legitimate rights or interests for the registrant. The Panel doubts whether the authority cited (given in the early days of the Policy) supports that proposition. If the proposition were correct, then there would be no point in Para. 4(c) of the Policy which allows a Respondent to demonstrate one of the there-stated situations in circumstances where a Complainant has given the Respondent no rights to use the disputed domain name.
(b) The Respondent’s request that the Panel conduct a live hearing with witnesses giving evidence on oath is quite beyond the metes and bounds of the Policy and must be rejected out of hand. The Respondent did not address either the Panel’s jurisdiction to hold such a hearing, let alone the logistics of doing so.
(c) The Panel’s decision will be published by the Center in the usual way. Neither the Panel nor the Center has any jurisdiction not to publish it.
(d) No explanation was offered by the Complainant for the fact that these proceedings were not commenced until almost four years after the registration of the disputed domain name. Although the equitable doctrine of laches is not covered by the Policy, such an unexplained delay in asserting rights can strengthen a claim by the Respondent of ignorance of a Complainant’s rights at the date of registration.
7. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is clearly confusingly similar to the Complainant’s registered mark FABJOB. The mere addition of the letter “s” does nothing to reduce the confusing similarity.
Despite the Respondent’s arguments that the trademark covers a generic term, the Panel cannot go behind the trademark registration and, in effect, “second guess” the decision of the U.S. Trademark Office to grant a registered mark. Whether the Complainant’s trademark could withstand the scrutiny of a Court on an infringement action is beside the point. The Complainant in this present proceeding need only satisfy the criteria of Para. 4(a) of the Policy. It has done so in respect of the first criterion, which is to show that the disputed domain name is identical to or confusingly similar to a mark in which the Complainant has rights.
The Complainant has clearly satisfied the requirements of this first limb of the Policy. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 and Thaigem Global Marketing Ltd v. Sanchai Aree, WIPO Case No. D2002-0358. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions at para. 1.1.
B. Rights or Legitimate Interests
The Complainant has never given the Respondent rights to the registered marks. Therefore, the only enquiry relevant to this case under Para. 4(c) of the Policy is whether the Respondent, before any notice of the dispute, used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As the Complainant has made out a prima facie case in relation to this element of the Policy, the onus is on the Respondent to show this.
The Complainant’s trademark registration relates back to the date of application, i.e. to a date before the registration of the disputed domain name. Before the date of registration, the Respondent could not have been expected to have conducted a trademark search and so could not be said to have had constructive notice. Moreover, the evidence of a common law mark, prior to the date of filing a trademark application with the USPTO, is insufficient to establish a common law mark in favour of the Complainant. See WIPO Overview (supra) Para. 1.7. There was no evidence to show a strong presence by the Complainant in Texas, prior to the registration of the disputed domain name, sufficient to give rise to an inference of a common law mark.
The generic character of the mark, the Canadian base of the Complainant, the fact that trademark registration did not occur until 18 months after the disputed domain name registration and the lack of proof of a common law mark all combine to provide an inference that the Respondent was unaware of the Complainant’s marks when it registered the disputed domain name. Although this finding is more relevant to the third criterion, it is also relevant to the second criterion under Para. 4(a) of the Policy.
The view of a very experienced WIPO Panel in Admiral Insurance Services Ltd v. Adam Dicker (WIPO Case No. D2005-0241) was that, in the absence of knowledge of a Complainant’s mark at the time of registration of a disputed domain name, the display of advertisements of competitors of a Complainant on a Google Adsense arrangement does not change the legitimacy of the Respondent’s arrangements.
It was necessary for the Panel in that case to decide whether intentional display of advertisements for the Complainant’s competitors, after the Respondent had become aware of the Complainant’s mark, could render illegitimate what had previously been legitimate. That Panel accepted that Google’s terms did not permit the Respondent to control the advertisements.
The present Panel is not convinced that a website owner can shirk responsibility as to what is placed by another on its website. See Sanofi-Aventis Aventis Pharma SA, Aventis Pharma Deutchland GmbH .v. IN4 Web Services, WIPO Case No. D2005-0938 and Herbalife International Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, to name but two authorities.
As was said by the Panelist in Sanofi-Aventis:
“These cases indicate the extreme caution with which any domain name registrant must approach such schemes. In the present case, the Respondent routinely enters newly registered domain names into a “pay-per’click” scheme. On the available evidence, the Panel found that the Respondent either passively condoned or was indifferent to the material posted to its domains by another party. The very intention of that other party is to drive traffic through the websites. It would appear from the evidence that one strategy to do so may be to use a third party trademark which is similar to the domain name. The Panel believes that registrations made as part of such a scheme are made and used in bad faith for the purposes of this Policy if it is held that the domain name in point is confusingly similar to a mark in which a third-party complainant has rights.”
See also Cactus Restaurants Ltd v. WebMaster NAF Case No. 0604000671297.
However, like the Panel in the Admiral Insurance case, the Panel does not need to decide whether the continued use of Google Adsense by the Respondent is legitimate. The Panel has inferred that, at the time of the registration of the disputed domain name, the Respondent did not know of the Complainant’s marks.
It is not clear exactly when the Respondent started providing links to job-providers in the disputed website. It may well have been doing so before any arrangement with Google. Nor is it clear exactly when it became aware of the Complainant and its marks.
The panel therefore has some reservations as to whether the Respondent has succeeded in providing any of the three circumstances set out in Para. 4(c) of the Policy. However, even if the Respondent fails to prove any of the circumstances under Para. 4(c), the finding of the Panel on bad faith registration is fatal to the Complaint. The Panel notes that bad faith of a Respondent is not necessarily proven by lack of legitimate rights and interests. The “bad faith’ requirement of the Policy should not be conflated with the “lack of legitimate rights” requirement, although the facts will often be common to both requirements.
D. Bad Faith Registration and Use
The Panel’s finding that the Complainant has not proved that the Respondent was aware of the Complainant or its mark when it acquired the domain name in this case, is fatal to any finding of bad faith registration against the Respondent.
A finding of bad faith registration may be made where bad faith use within Para. 4(b)(iv) is the only evidence tending to show the purpose for which a domain name was registered. Where, however, there is an available inference that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250; Viz Communications, Inc. v. Redsun dba and David Penava, WIPO Case No. D2000-0905, and Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085 and the Admiral Insurance decision (supra).
Accordingly, even if the Panel were to find that the display of employment advertisements on the Respondent’s website after it gained knowledge of the Complainant’s mark constituted bad faith use within paragraph 4(b)(iv), that finding could not displace the Panel’s view that the domain name was not registered in bad faith in June 2002.
Accordingly, the Complaint must fail because the Complainant has not satisfied the third criterion under Para. 4(a) of the Policy.
8. Reverse Domain Name Hijacking (RNDH)
In the Panel’s view, this is not an appropriate case for a reverse domain name hijacking order. The Complainant owns registered marks and was attempting to enforce them. To succeed on a claim of reverse domain name hijacking, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, but nevertheless brought the Complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224. The Panel must consider both “malicious intent and recklessness or knowing disregard that the Respondent possessed legitimate interests”. Gold Line International Inc. v. GoldLine, WIPO Case No. D2000-1151.
The Panel does not consider that the situation of the Complainant should be viewed in the pejorative light expressed above. The Respondent’s claim for a declaration of reverse domain name hijacking is dismissed.
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Dated: August 16, 2006
1 The Panel does not doubt the relevance of this jurisprudence to any Court proceedings relating to the Complainant’s trademarks. However, the Panel must operate within the Policy that simply requires a disputed domain name to be identical or confusingly similar to a mark in which a Complainant has rights.