The Complainant is T-Online.at Internet Service GmbH, of Vienna, Austria, represented by S.B.G. & K., Patent & Law Offices, Hungary.
The Respondent is Lajos Kiss, Delux Befektetes, Hungary, represented by Rechtsanwäelte Laake & Moebius, Germany.
The disputed domain name <myjobscout.com> (“the Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On October 22, 2008, eNom 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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. The Response was filed with the Center on November 17, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on November 28, 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.
On December 3, 2008, the Complainant's representatives sent an email to the Center, advising that they had not received a copy of the Response until that day. The email from the Complainant's representatives was forwarded to the Panel for its consideration.
The Complainant is the registered proprietor of International and Community Trademark registrations of the mark JOBSCOUT24, in international class 35, for advertising and marketing services. The international registration has a priority date of February 16, 2000, and protects the mark in a number of European countries, including Hungary. The Community Trademark registration has a priority date of May 26, 2000.
In addition, the Complainant is the proprietor of a JOB SCOUT 24 device mark, registered as a Community Trademark with effect from October 3, 2003.
The Complainant says that the trademark SCOUT24 is known as one of the leading marks concerning online European marketplaces and classified publishing on the Internet. It says that the “Scout 24 group” owns numerous national and international “Scout” and “Scout24” trademark rights many of which were transferred to the Complainant. These are said to encompass a broad range of sector-specific marketplaces, and include the marks AUTOSCOUT24, ELECTRONICSCOUT24, FINANCESCOUT24, FRIENDSCOUT24, IMMOBILIENSCOUT24, JOBSCOUT24, and TRAVELSCOUT24.
The Respondent and the Domain Name
The Domain Name was registered on April 13, 2004. It resolves to a website (the Respondent's website), at which there are displayed lists of commercial links to third parties' websites, grouped under different topic headings, e.g., job, insurance, credit cards, hotel reservation, debt consolidation, etc.
The Response consists of a letter from the Respondent's representatives. It advises that the Respondent is a Hungarian businessman operating under his own name and for the firm Delux Befektetes. It says that the Respondent holds several generic domain names “for the future development of services”. According to the Response, the sponsored advertising at the Respondent's website was arranged by the Registrar, “until [the Domain Name] will be used for content by the Respondent referring to the meaning of the generic domain name built by the generic words ‘my job scout'”.
The Respondent's representatives provided various examples of the meanings of the expressions “scout” and “scouting”. They also produced the results of an Internet “Madrid Express Structured Search”, showing some 58 records of trademarks containing the word “scout”.
The Response says that the Respondent did not register the Domain Name in order to earn pay-per-click revenue relying upon the Complainant's trademark, because the sponsored advertising links only create profit for the Registrar itself.
The Respondent says that he did not know of the Complainant or its trademark before receiving the Notification of Complaint in this proceeding.
The Complainant's representatives sent a cease and desist letter to the Respondent, at the address indicated in the WhoIs particulars for the Domain Name, on July 15, 2008. The cease and desist letter was returned with the indication “unknown”.
A Hungary-based representative of the Complainant then called personally at the address of the Respondent, but was unable to locate the Respondent at that address.
Previous Panel Decisions where the Respondent has been named as respondent
The Complainant referred to two previous panel decisions in which the Respondent has been named as respondent – Maurer + Wirtz GmbH & C.o KG. v. Lajos Kiss, Delux Befektetes, WIPO Case No. D2007-1696, and Ravensburger Aktiengellschaft v. Delux Befektetes c/o Lajos Kiss, NAF Case No. 933228. The Respondent did not file any response in either of those cases.
The Complainant contends as follows:
1. The Domain Name incorporates the Complainant's JOBSCOUT24 and JOB SCOUT 24 trademarks without the number “24”, and is therefore confusingly similar to the Complainant's said marks.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) There is no indication that the Respondent performs any business activities at the Respondent's website, or that he has made demonstrable preparations to do so.
(ii) The Respondent presumably receives click-through revenue for each click on the displayed links at the Respondent's website. Therefore, the Respondent intends to attract Internet users to the Respondent's website, and thus gain commercial benefit from the confusing similarity between the Domain Name and the Complainant's well-known JOBSCOUT24 and JOB SCOUT 24 marks. The Respondent is unfairly abusing the Complainant's famous trademarks.
(iii) There is no evidence that the Respondent is commonly known by the Domain Name.
(iv) The Respondent is using the Domain Name to dilute and tarnish the Complainant's trademarks.
3. The Domain Name was registered and is being used in bad faith. The Complainant refers to the following matters in support of that contention:
(i) The Respondent could not have failed to recognize the Complainant's well-known marks at the time he registered the Domain Name.
(ii) The Respondent indicated a false address when he registered the Domain Name. The Respondent failed to reply to the cease and desist letter from the Complainant's representatives, and similarly failed to file any response in either of the previous two panel decisions referred to above in which the Respondent was named as respondent.
(iii) Furthermore, the Complainant asserted that the Respondent's intention is to attract Internet users to the Respondent's website and gain commercial benefits from the similarity between the Domain Name and the complainant's well-known trademarks. Customers are likely to be confused into believing that the complainant is the source of, or is sponsoring, the Respondent's website. The Respondent is taking advantage of the confusing similarity between the Domain Name and the Complainant's marks, in order to profit from the goodwill associated with those marks.
4. The Respondent failed to provide a copy of his response to the Complainant (in breach of paragraph 2(h)(iii) of the Rules). Under paragraph 14(a) of the Rules, if a party does not comply with any of the time periods established by the Rules, the Panel is required to proceed to a decision on the Complaint. The Respondent should therefore be considered to be in default, and the Response treated as a late-filed Response. The Panel should not receive and consider the late-filed Response. In addition, the failure to provide the Complainant with a copy of the Response is another factor indicating bad faith on the part of the Respondent.
The Respondent contends as follows:
1. The words “scout” and “scouting” may refer to a number of specific things or concepts, including reconnaissance, a professional sports talent scout, a traditional Apache scout, United States of America (“U.S.”) Army Indian “Scouts”, and U.S. Army Philippine “Scouts”. A “scout” can also refer to a college servant at Oxford University. The expression “Scout”, as a proper noun with an upper case “S”, has numerous meanings. Some of them are a “Boy Scout”, a “Girl Guide” or “Girl Scout”, a “Sea Scout”, “Madison Scouts Drum and Bugle Corp”, “Scout (Dungeons & Dragons)”, “Scout (Operating System)”, and “Street Conditions Observation Unit”. The Respondent also listed various “Scout” vehicles, including an aircraft, a passenger train, a rocket, and an unmanned air vehicle said to have been used by the Israel defense forces during the 1982 war in Lebanon. Generally, a “scout” is someone or something that helps you to find someone or something.
2. There were 58 records of trademarks containing the word “scout” produced on a Madrid Express Structured Search”.
3. In this case, the generic words “my job scout” describe a person or a tool that helps you to find a job.
4. Under the Policy, generic words are given no protection, because the registration of generic words as trademarks would prevent anyone else from describing their services by using such.
5. The addition of the generic expression “24” gives little protection to the trademark in this field, due to the fact that the word “jobscout” describes the service itself, and the number “24” is a synonym for services provided around the clock on the Internet. If the generic expression “jobscout” comes without the addition of the number “24” at the end, and in combination with another generic word at the beginning “my” the domain name so formed cannot be confusingly similar to a “jobscout24” trademark (because of the low protection of the trademark itself and the fact that the Domain Name comprises a simple combination of generic, or dictionary, words.
6. The Respondent's plan to establish a future commercial website at the Domain Name dealing with issues relating to the scouting of jobs, is unlikely to constitute an infringing use of the Complainant's marks, in any jurisdiction. The Domain Name is not sufficiently similar to the Complainant's trademarks to lead to a higher level of traffic to the Respondent's website caused by users' confusion.
7. The Respondent did not register the Domain Name in order to earn pay-per-click revenue relying on the Complainant's trademark, because the parking page is hosted by the Registrar and the sponsored advertising links only create profit for the Registrar.
8. The Respondent did not register the Domain Name to sell it, whether to the Complainant or to anyone else. The Domain Name was not registered, and is not being used, in bad faith.
The Complainant is correct in pointing out that the Respondent should have provided a copy of its Response to the Complainant (Rules, paragraph 5(b)(vii). Furthermore, the Response does not contain the certification as to completeness and accuracy of the Response which is required by paragraph 5(b)(viii) of the Rules.
However, the Response was submitted to the Center within the time allocated by the Rules, and the Panel cannot see that the Complainant will suffer any prejudice if the Response is admitted and considered. In the circumstances, the Panel exercises its discretion to receive and consider the Response. However, the Panel will take into account the Respondent's failure to provide the certification as to accuracy, in considering the weight to be given to the Respondent's contentions.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Based on the record, the Panel finds that the Complainant has sufficiently proved that it is the registered proprietor of the mark JOBSCOUT24, both in the European Union and internationally. That mark is obviously not identical to the Domain Name, so the issue in this part of the Complaint is whether that mark is confusingly similar to the Domain Name.
The Respondent argues that it isn't. The Respondent submits that the Domain Name consists of three generic or descriptive words, and that leaving off the number “24”, and adding the word “my” at the beginning of the Domain Name , are in combination sufficient to avoid what might otherwise have been confusing similarity between the Complainant's marks and the Domain Name. The Panel cannot accept that submission.
First, the Domain Name is visually similar to the Complainant's word marks – the expression “job scout” is the prominent feature of the Complainant's marks, and it is incorporated in its entirety in the Domain Name. It appears to the Panel that those familiar with the Complainant and its operations would likely think of the Complainant when coming across a domain name incorporating the expression “job scout”. Secondly, the Panel is of the view that the addition of the word “my”, and the deletion of the “24”, are insufficient to offset the confusion which the incorporation in the Domain Name of the combined expression “jobscout” will probably cause. Neither the addition nor the deletion significantly alters the general impression or idea conveyed by the Complainant's trademarks.
The Respondent argues that, where a complainant's trademark is towards the descriptive or suggestive end of the spectrum (i.e., the spectrum of marks ranging from invented, or made-up, terms at one end, to wholly descriptive expressions at the other), only minor changes will be necessary to distinguish a disputed domain name from the complainant's mark. The Panel accepts that there is authority for that general proposition in some UDRP panel decisions see for example, Meat and Livestock Commission v. David Pearce aka OTC/The Recipe for BSE, WIPO Case No. D2003-0645, and UK Betting PLC v. Pam Oldfield, WIPO Case No. D2005-0637. But in the Panel's view that proposition is not applicable to the combination of words which is relevant in this case. First, the Panel has reservations over the contention that “scout”, in ordinary English usage, has the wide meaning for which the Respondent contends, namely “someone or something that helps you to find someone or something”. To take an example, if one approached a real estate or letting agent to help one find a house or an apartment, one would be unlikely (at least in the Panel's experience) to refer to that agent as one's “house scout”, or “apartment scout”. In ordinary English, the word “scout” appears to be more frequently used to refer to someone who “scouts out”, or “scouts for”, some particular thing or things e.g., particular terrain (the “reconnaissance” sense referred to by the Respondent), or talent (in the case of a “talent scout”). The Respondent's representatives' researches turned up a number of examples of the word “scout” used as part of a combination of English words (e.g., “talent scout”, and “boy scout”), but their research does not appear to have located (in ordinary English usage) any “job scout” combination. Although the Respondent's argument concerning the strength of the mark may bear in the Panel's analysis under the second and third elements of the Policy, it is enough under paragraph 4(a) of the Policy that the Complainant has proved rights in a mark to which the Domain Name is confusingly similar. The addition of the word “my” and the deletion of the number “24” are insufficient to bar a finding of confusingly similarity between the Domain Name and the mark when the Domain Name incorporates the most prominent feature of the Complainant's marks.
For the foregoing reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant's JOBSCOUT24 and JOB SCOUT 24 marks.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. 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”.
In this case, the Domain Name is confusingly similar to the Complainant's marks, and the Complainant has not authorized the Respondent to use its marks (or any expressions which are confusingly similar thereto), whether in a domain name or otherwise. The Respondent does not claim to be commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot apply. Nor, based on the current record, has the Respondent been making a noncommercial or fair use of the Domain Name, without intent for commercial gain. Such use as has been made of the Domain Name, appears to have been a commercial use (whether for the direct benefit of the Respondent (as alleged by the Complainant) or the for the benefit of the Registrar (as claimed by the Respondent)). In those circumstances, Paragraph 4(c)(iii) of the Policy cannot apply either.
The foregoing combination of circumstances is more than sufficient to establish the Complainant's prima facie case, so the evidentiary onus shifts to the Respondent to show that it does have some right or legitimate interest in respect of the Domain Name.
The Respondent has failed to provide any such evidence. The Response speaks vaguely of the “future development of services under generic Domains”, and “the plan of a future commercial website dealing with issues relating to the scouting of jobs …”, but the Respondent has produced no evidence of any such plans. The Respondent does not claim to have been offering any goods or services through the Respondent's website, and vague references to future plans do not constitute evidence of demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services (such as might have provided a basis for a right or legitimate interest under paragraph 4(c)(i) of the Policy).
The Respondent's real argument on this part of the Complaint, appears to be that the Domain Name consists of three descriptive or generic words, and that anyone is entitled to use descriptive or generic English words to form a domain name.
As the Panel has noted in section 6.C. of this decision, the Panel is not satisfied on the evidence which has been produced, that the combined expression “job scout” is a common, or dictionary, expression in the English language. On the evidence which has been produced, it goes too far to suggest that the word “scout” can be combined with any noun to refer (in ordinary English usage) to a person or tool who searches for, or seeks out, someone or something.
The Complainant having established its prima facie case, the onus of proof in this part of the proceeding is on the Respondent, and the Respondent has not satisfied the Panel that the two words, in combination, form an ordinary descriptive English expression.
But even if the Domain Name was a purely descriptive expression, the Respondent's use of the Domain Name would not be bona fide, or provide a basis for a “legitimate interest” claim, if the Respondent registered or acquired the Domain Name because of its value as a close approximation of the Complainant's service marks, and with a view to trading off the Complainant's goodwill in those marks (Allocation Network GmbH v Steve Gregory, WIPO Case No. D2000-0016). The Respondent's reason for his choice of the Domain Name is therefore extremely important.
The Respondent has failed to provide any satisfactory reason for his choice of the Domain Name. “myjobscout” has no apparent reference or relationship to any material which is presently posted on the Respondent's website, and there is an obvious and unanswered question as to how and why that name came to be chosen. The Panel does not accept the vague claims in the Response relating to the Respondent's future intentions for the use of the Domain Name. The Domain Name has been registered for over four and a half years, and the Respondent has not produced any evidence of demonstrable preparation to establish any bona fide business website at the Domain Name.
In the absence of any plausible explanation for his choice of the Domain Name, the Panel considers it more likely than not that the Respondent registered the Domain Name because of its similarity to the Complainant's trademarks, and with a view to trading off the Complainant's goodwill in those marks. The Respondent has accordingly failed to persuade the Panel that he has any right or legitimate interest in respect of the Domain Name, and the Complainant must succeed in this part of its Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
For the reasons which are set out below, the Panel is satisfied that the Complainant has also proved this part of its Complaint. The Panel has come to that view for the following reasons.
1. Notwithstanding the denial in the Response, the Panel thinks it more likely than not that the Respondent was aware of the Complainant and / or its marks when he registered the Domain Name. The Panel has not been persuaded (on the evidence which the Respondent has produced) that the combination of words which make up the Domain Name is purely descriptive or generic, and the Respondent has provided no explanation for his choice of the Domain Name. Nor has he provided any plausible explanation for the fact that, four and a half years on from the registration date, the Domain Name is not being put to any purpose beyond serving as a landing page for sponsored links to third party websites – there is no evidence of the Respondent having made any “demonstrable preparations” to use the Domain Name in any bona fide business or other activity. Furthermore, when he registered the Domain Name, the Respondent represented to the Registrar that, to his knowledge, the registration of the Domain Name would not infringe upon or otherwise violate the rights of any third party. He undertook the “responsibility to determine” whether the registration of the Domain Name would infringe or violate someone else's rights (Policy, Paragraph 2). The Respondent appears to be an acquirer of what he describes as “generic domain names for the future development of services” (Response, Paragraph 1), and in the Panel's view the Domain Name was not such a common or generic expression that the Respondent was relieved of any duty of enquiry as to the existence of third party rights before he registered the Domain Name (Media General Communications Inc., v. RareNames,WebReg, WIPO Case No. D2006-0964, and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Moreover, the International registration of the Complainant's JOBSCOUT24 mark was in force in Hungary when the Domain Name was registered, and the Panel is satisfied that any reasonable enquiries the Respondent might have made before registering the Domain Name would have led him to the Complainant and its marks. Either the Respondent conducted those enquiries and was aware of the Complainant and / or its marks, or the Respondent was wilfully blind in failing to do so, in the sense discussed in cases such as Media General Communications Inc.v RareNames, WebReg, and Grundfos A/S v Texas International Property Associates. In either case, the Respondent's denial of knowledge of the Complainant's marks must be rejected.
2. A number of other factors reinforce the Panel's impression of bad faith on the part of the Respondent. First, there is the unexplained failure to provide an effective address in the WhoIs particulars provided for the Domain Name. The Complainant was unable to deliver its cease and desist letter to the address provided, and the Panel notes that the Center was also unable to deliver the hard copy of the Complaint in this proceeding to the physical address provided by the Respondent. The same thing appears to have happened in the two previous panel decisions cited by the Complainant -- the attempts to deliver documents to the Respondent's address were unsuccessful. Those matters might have been explained by the Respondent, but the Response was silent on them. Secondly, there is the informal nature of the Response, filed by the Respondent's representatives without the Certificate as to accuracy which is required under Paragraph 5(b) (viii) of the Rules. Thirdly, there is the failure to serve a copy of the Response on the Complainant. The last two matters might not have been quite as significant if the Respondent had been acting for himself, without the assistance of counsel. But that has not been the case. The Respondent's representatives appear to be well versed in trade mark law and in the relevant provisions of the Policy, and it seems improbable that the Respondent would not have been aware of the requirement to provide a certification as to the accuracy of the matters stated in the Response. Whatever may have been the reason, no such certification was provided, and the Panel is entitled to (and does) take that deficiency into account in attributing little credibility to those parts of the Response which dealt with the Respondent's knowledge of the Complainant, and his reasons for registering the Domain Name.
3. The Respondent denies responsibility for the sponsored links which appear on the Respondent's website, saying that they were placed there by the Registrar, and that the Respondent does not derive click-through or other revenue from them. The Panel does not accept that argument. The argument was run by the respondent in the Grundfos A/S case (supra), where this Panel held that the respondent was ultimately responsible for the content which was posted on the respondent's website. The Panel in the Grundfos A/S case referred to the similar conclusions which had been reached by the panels in Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC, and Sheraton International Inc. v. Jake Porter WIPO Case No. D2007-1254; Grisoft, s.r.o. v Original Web Ventures Inc., WIPO Case No. D2006-1381, and NVT Birmingham, LLC d/b/a CBS42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079. The Domain Name appears to be monetized ─ undeniably the Respondent's website hosts links to other websites and the Respondent cannot disclaim responsibility for those links. It does not matter if the Respondent derived revenue from the links itself, or allowed another party to do so.
4. Having regard to the foregoing considerations, the Panel concludes that inter alia the Domain Name was registered and has been used, for the bad faith purpose described at paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's JOBSCOUT24 mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or the products or services offered through the Respondent's website.
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 <myjobscout.com> be transferred to the Complainant.
Dated: December 12, 2008