WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CareerBuilder, LLC v. Golnaar Ahmadzadeh
Case No. D2008-0849
1. The Parties
Complainant is CareerBuilder, LLC, Chicago, Illinois, United States of America, represented by Latham & Watkins, LLP, United States of America.
Respondent is Golnaar Ahmadzadeh, Canoga Park, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <careerbuilder-security.net> (the “Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (“Melbourne IT”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2008. On June 4, 2008, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the Domain Name. On June 5,2008, Melbourne IT transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2008.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 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
In May of 1996, Complainant adopted the CAREERBUILDER trademark (the “Mark”) in connection with an on-line employment recruiting agency and related services. Those services are generally offered through Complainant’s website which is accessible at “www.careerbuilder.com”. Complainant has registrations for the Mark throughout the world, including the following in the United States of America: 2,082,443 (registered 7/22/1997) for CAREERBUILDER and 2,823,227 (registered 3/16/2004) for CAREERBUILDER.COM. Complainant also owns the following registrations for CAREERBUILDER outside of the United States of America: European Union 001,199,363 (registered 6/08/1999); Mexico 640,961(registered 1/31/2000); and Canada 548,113 (registered 7/13/2001).
The Domain Name was registered on December 20, 2007.
5. Parties’ Contentions
As a result of CareerBuilder’s extensive and continuous use of the Mark in the United States of America and elsewhere since May of 1996, Complainant’s CAREERBUILDER Mark has become distinctive of Complainant’s services and is well-known in the online employee recruiting industry. The Domain Name is confusingly similar to the Mark.
Complainant has clear priority of rights in the Mark. Complainant has used the Mark since 1996 and it owns various registrations for the Mark and related marks in the United States of America and abroad which it registered before Respondent registered the Domain Name on December 20, 2007. Respondent has no connection or affiliation with Complainant and Complainant has not given him a license or consent, express or implied, to use the Mark in a domain name or in any other manner. Also, Complainant does not sponsor or endorse Respondent’s usage of the Mark in connection with the Domain Name. Moreover, Respondent’s registration and use of the Domain Name has proven to be intended for fraudulent purposes because Respondent has misleadingly spoofed Complainant’s website in a phishing scheme which attempts to fraudulently obtain credit card, financial and/or other personal information using the Domain Name. Therefore, Respondent cannot possibly claim to be making a legitimate non-commercial or fair use of the Mark.
Respondent knew of and sought to capitalize from the fame and value of the Mark and the high traffic location of <careerbuilder.com> when he registered the Domain Name. Respondent’s knowledge of Complainant’s rights is borne out by the manner in which Respondent has used the Domain Name. The Domain Name has been used as part of a phishing scheme (i.e., using “spoofed” e-mails and a fraudulent website designed to fool recipients into divulging personal financial data such as credit card numbers, account usernames and passwords, social security numbers, etc.). Respondent has imitated Complainant’s website and has sent e-mails appearing to emanate from Complainant. As of the date of this Complaint, the Domain Name does not resolve to a website. Based on the foregoing, it is apparent that the sole purpose of Respondent’s registration and use of the Domain Name is to capture Complainant’s actual or potential customers and divert them to unauthorized third party websites that are not sponsored or endorsed by or affiliated with Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
The Panel finds Complainant has established rights in the CAREERBUILDER Mark based on its long-standing use of the Mark in connection with an on-line employment recruiting agency and related services, as well as U.S. trademark registrations for the Mark Complainant made of record.
The Panel further finds that the domain name <careerbuilder-security.net> is confusingly similar to Complainant’s CAREERBUILDER Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “careerbuilder-security”). The Domain Name wholly incorporates the CAREERBUILDER mark, adding a hyphen and the descriptive word “security”. This Panel agrees with the decision cited by Complainant, CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251, that combining the CAREERBUILDER mark with a descriptive term (<job-careerbuilder.com>) “does not create a new, distinctive name.” Furthermore, use of the particular term “security” with the Mark in the context of the fraudulent phishing scheme described below, only serves to further the confusion.
“[P]unctuation changes such as hyphens are de minimis when analyzing a domain name for identity or confusing similarity under the Policy.” Id. And the addition of the generic top level (“gTLD”) domain such as “.net” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark, for example, in a domain name. Furthermore, Respondent has not presented any evidence showing any connection or affiliation with Complainant. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder his burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by 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.”
These criteria are not exclusive and the panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith.
Respondent registered and used a domain name that, as the Panel found above, is identical or confusingly similar to the Mark. Respondent has not disputed the fact that Complainant has been using the Mark in the United States of America over 11 years before Respondent registered the Domain Name. In fact, Complainant had registered the Mark with the U.S. Patent and Trademark Office over 10 years before Respondent registered the Domain Name. Similarly, Respondent has not disputed the fact that Complainant has been using the mark CAREERBUILDER.COM since 1996, over 11 years before Respondent registered the Domain Name in December, 2007. That mark has been registered with the U.S. Patent and Trademark Office since March, 2004, over three years before Respondent registered the Domain Name. The Panel finds it hard to believe that Respondent did not know of Complainant’s rights in the Mark or its domain name <careerbuilder.com> when he adopted and began using the Domain Name.
Further evidence that Respondent knew of Complainant’s rights when it adopted and used the Domain Name is supported by the fraudulent “phishing” scheme Respondent has been perpetrating using the Domain Name. “Phishing is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user Ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities.” Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. 2006-0228. Using a confusingly similar domain name (<careerbuilder-security.net>) that incorporates Complainant’s registered Mark (CAREERBUILDER), and further using Complainant’s registered mark CAREERBUILDER.COM on its website (same font and style Complainant uses), Respondent has been imitating Complainant’s website to an unsuspecting public. Individuals arriving at Respondent’s webpage have been told: “We require confirmation of your information.” And they were invited to confirm sensitive and confidential information for accounts they had opened with Complainant: “Please Login and confirm your information. It is necessary and very important for your Careerbuilder’s account.”
As a further part of the scheme, Respondent sends to Complainant’s clients “spoofed” e-mails that look like they were generated by Complainant. For example, the e-mail (1) use in a prominent place Complainant’s registered CAREERBUILDER.COM mark (same font and style Complainant uses); (2) are signed “CareerBuilder, Inc.”; (3) use the salutation “Dear CareerBuilder member”; and (4) are From: “CareerBuilder Inc. [mailto:[…]@CareerBuilder.com].” The “subject” line of the e-mails is geared to make Complainant’s clients believe that they are getting an important security message from Complainant: “Subject: CareerBuilder Security Request.” The body of the e-mail leads Complainant’s client (the particular addressee) to believe that their billing information is out of date (“We found out that your CareerBuilder Billing information’s records are out of date.”) and that if they do not update these records, their account will be terminated (“[Y]our refusal to update your record will be finished in your account termination. . . . As you have updated your account records your CareerBuilder session will not be interrupted.”). Thus, Complainant’s clients are fooled into divulging personal financial data such as credit card numbers, account usernames and passwords, social security numbers, etc. in order to maintain their accounts with Complainant. Respondent’s registration and use of the Domain Name under the fraudulent circumstances set forth above constitute bad faith registration and use of the Domain Name. See Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614 (holding that “[phishing] is a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv).”); see also Australia and New Zealand Banking Group Limited v. Bashou Ltd, WIPO Case No. D2007-0031.
Furthermore Respondent’s conduct evinces at least part of his motive to somehow cash in on the personal and financial data obtained from Complainant’s clients. This is also a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <careerbuilder-security.net> be transferred to Complainant.
Harrie R. Samaras
Dated: July 28, 2008