WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accolo, Inc. v. St. Kitts Registry
Case No. D2007-1932
1. The Parties
The Complainant is Accolo, Inc., Larkspur, California, United States of America, represented by The Moore Law Group, United States of America.
The Respondent is St. Kitts Registry, of Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <acollo.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint (naming “Moniker Privacy Services” as Respondent and identifying two disputed domain names) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2007. On December 27, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 2, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response providing registrant name and contact information which differed from that in the Complaint. Specifically, the Registrar identified the registrant as “St Kitts Registry”. In response to a notification by the Center providing the registrant information and inviting an amendment in this light (and also requesting a further amendment to the Complaint, as it was initially filed in relation to two domain names registered by different respondents), the Complainant filed an amendment to the Complaint on January 15, 2008. The amendment to the Complaint named the Respondent as “St Kitts Registry” (and withdrew one of the two previously identified domain names from this dispute). 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 January 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on February 14, 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.
4. Factual Background
The following facts, as outlined in the Complaint, are not contested.
The Complainant provides recruitment solutions for small and mid-size companies. It has expert recruiting staff, a patented process and methods, and an end-to-end recruiting infrastructure that helps its clients compete with the world’s top companies for high-level talent.
The Complainant operates a website at “accolo.com”. The Complainant registered that domain name on February 18, 2003.
The Complainant also owns the service mark ACCOLO, which was registered on the principal register of the United States Patent and Trademark Office on February 18, 2003. That mark is registered for recruitment, career networking and referral of jobs, in class 35. The Complainant uses that mark in connection with its business. In Latin, the word “accolo” means “to live near”. The Complainant chose this term since its business is to create an on-line community for job placement services.
The Respondent registered the disputed domain name on June 28, 2005. The disputed domain name was initially registered (as indicated in the Whois details) by “Moniker Privacy Services on behalf of Doe Respondent”.
At the date of this decision, the disputed domain name reverts to a portal or landing website. The website contains a list of links grouped under headings such as “Recruitment Solution”, “Job Placement”, and “Recruiting Services”. The website is entirely devoted to recruitment-related links.
The Respondent has been an unsuccessful respondent in numerous and recent proceedings under the Policy. See e.g. Nady Systems, Inc. v. Registrant : St Kitts Registry / Moniker Privacy Services, WIPO Case No. D2007-1401; UDR, Inc. v. Registrant 460461 Domain names Administration/St Kitts Registry, WIPO Case No. D2007-0963; The Professional Golfers Association of America v. MONIKER460461/ Domain Names Administration/ St Kitts Registry, WIPO Case No. D2007-0900; Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741; Six Continents Hotels Inc. v. Registrant : St Kitts Registry, WIPO Case No. D2007-0758; Seiko Epson Corporation and Epson America Inc. v. St Kitts Registry, NAF Claim Number: FA0710001093102; Chevron Intellectual Property LLC v. St. Kitts Registry, NAF Claim Number: FA0709001080702; among others. In all of those cases, the Respondent submitted no response.
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant claims that there is a high likelihood of confusion between its trademark and the disputed domain name. The Complainant states that the disputed domain name and its mark differ only by a single letter.
The Complainant also states that there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name. The Complainant believes that the Respondent registered the disputed domain name solely and intentionally to divert Internet traffic to its website through Internet users’ inadvertent mistyping of the Complainant’s mark into an internet search engine.
Finally, the Complainant claims that the disputed domain name was registered and has been used in bad faith. The Respondent’s use of a privacy service is an indication of bad faith. To support this contention, the Complainant cites WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975. The Complainant also states that anyone with a legitimate interest in using a name identical to its mark would have realized, through the exercise of due diligence, that the name “accolo” was already in use in the United States and on the Internet. The Complainant argues that the Respondent should therefore be presumed to have knowledge of the Complainant’s mark at the time it registered the disputed domain name.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove all of these three elements. Each of these elements is discussed in turn as follows.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove two things: One is that the Complainant “has rights” in a mark. The other is that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
In relation to the first of these, it is clear that the Complainant “has rights” in a mark. The Complainant provided evidence of its rights in its mark ACCOLO, which is registered on the principal register of the USPTO.
In relation to the second, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark. The overall impression of the disputed domain name is confusingly similar to the Complainant’s mark. It is only different from the Complainant’s mark in that it contains only one “c” and an additional “l”. Such a slight difference has not been found to distinguish a mark in numerous prior proceedings under the Policy. In this respect, and particularly in relation to a case involving the Respondent, see Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741, and the cases cited in that one.
Further, as far as the Panel is aware, the slight difference in the disputed domain name changes it from a term which has some meaning (i.e. “accolo” in Latin, meaning “to live near”) to a term which has no meaning (“acollo”). The risk of confusion is therefore more significant, to the extent the disputed domain name does not have an alternative association.
For these reasons, the Complainant has established this first element.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, for the purpose of paragraph 4(a)(ii) of the Policy. The Respondent has not provided any evidence or argument to the contrary.
It is well-established that “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.” See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Having failed to submit a response, the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name. There is no other evidence available to the Panel that would suggest that the Respondent has such rights or legitimate interests. Rather, and for the reasons set out further below (in relation to bad faith), the evidence indicates otherwise.
For these reasons, the Complainant has established this second element.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith for the following reasons.
Firstly, the evidence in this case suggests that the Respondent’s registration and use of the disputed domain name appears to have been based on the trademark value of the Complainant’s mark. All the links that appear on the Respondent’s portal website relate to the trademark value of the Complainant’s mark. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cybersquatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited in those ones.)
Secondly, the Respondent has a substantial history as a serially unsuccessful respondent in proceedings under the Policy. Indeed, the Panel is not aware of any proceedings in which the Respondent has successfully defended its registration of a disputed domain name. Relevantly, paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith in circumstances where a respondent has engaged in a “pattern of conduct” to prevent the owner of a mark from registering its mark in a domain name. Being a serially unsuccessful respondent has, in itself, been found to be a sufficient for a finding of bad faith for the purpose of paragraph 4(b)(ii) of the Policy. (For example, see e.g. AT&T Corp. v. Asia Ventures, Inc., WIPO Case No. D2005-1012.)
Thirdly, having been an unsuccessful respondent in those prior proceedings, the Respondent must have been aware of, or at least indifferent to, the potential for it to interfere with the rights of trademark owners. There is no evidence in this case that the Respondent has taken any steps to avoid such interference. Rather, the Respondent has continued its conduct of registering domain names that are confusingly similar to others trademarks. This suggests that the Respondent was alive to the potential for its registration to interfere with others’ trademark rights. The lack of any alternative explanation for the Respondent’s registration, the confusing similarity of the disputed domain name, as well as the Respondent’s prior conduct, suggest that the Respondent’s intention was to misleadingly divert Internet traffic for some commercial gain. An intention to divert Internet traffic for this reason is evidence of bad faith for the purpose of paragraph 4(b)(iv) of the Policy.
Finally, anonymous registration supports a finding of bad faith, to the extent that it demonstrates evasive conduct by a respondent. (See e.g. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.) In this case, the Respondent’s details were only fully disclosed after the Center’s request to the Registrar, and after the initiation of this dispute. The Respondent’s prior pattern of conduct, as well as the content of the Respondent’s portal website, provide some evidence that the Respondent had a good motivation for not disclosing its identity up-front. In these circumstances, the Respondent’s anonymous registration of the disputed domain name, through a privacy service, supports a finding of bad faith.
(For the sake of completeness however, the Panel notes that it does not accept that anonymous registration is by itself an indication of bad faith, as the Complainant contends by reference to the decision in WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975. There is nothing in the panel’s discussion in that case that sets out such a principle. As that panel noted: “there can be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service.”)
For these reasons, the Complainant has established this third element.
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, <acollo.com>, be transferred to the Complainant.
James A. Barker
Dated: February 28, 2008