WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikijobs Limited v. Ajay Kolla
Case No. D2012-1976
1. The Parties
The Complainant is Wikijobs Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kingsley Napley LLP, United Kingdom.
The Respondent is Ajay Kolla of Andhra, Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <wikijobs.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 14, 2012. 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 November 14, 2012 the Respondent forwarded to the Center a copy of a letter dated February 9, 2012, from the Respondent's solicitors in reply to a letter of demand to the Respondent dated January 3, 2012, from the Complainant's then solicitors, a law firm different from the Complainant's representatives in this dispute. That correspondence was not referred to in the Complaint. Pursuant to Rule 12 of the Rules, the Panel issued on November 28, 2012, the Administrative Panel Procedural Order No. 1 in order to request further information from the Complainant.
The Complainant submitted arguments in reply to the Procedural Order on November 30, 2012.
The Respondent did not file a Reply.
4. Factual Background
The disputed domain name was created on June 12, 2004. It was acquired by the Respondent on November 22, 2011. The full history of ownership of the disputed domain name is not known but between November, 2005, and November 11, 2011, there were at least five separate, and apparently unrelated, owners of the disputed domain name. The Complainant commenced business under the name Wikijob in August 2007 and has owned the domain name <wikijobs.co.uk> since July 2007. The Complainant was incorporated under its present name on July 24, 2008, and on August 16, 2010, filed the Community Trademark Application No. 009315599 WIKIJOB in class 35. The application proceeded to registration on December 9, 2010. The Complainant has achieved a substantial turnover and has provided services to a number of prominent clients. It has generated substantial internal traffic including on Twitter and Facebook.
The record at the website “www.archive.org” shows captures of the website at the disputed domain name on October 17, November 16 and December 17, 2007, on which the disputed domain name was offered for sale for USD 25,000. Currently, the disputed domain name resolves to a portal site providing links to a variety of employment related e-commerce sites throughout the world.
Throughout the years 2010-2011, the Complainant made several offers, under the pseudonym Star Letter to purchase the disputed domain name, first from the Respondent's predecessors and then from the Respondent himself. None of the offers was accepted.
5. Parties’ Contentions
In the letter of February 9, 2012 referred to in paragraph 3 above, the Respondent's solicitors asserted that the Respondent had used the disputed domain name continuously since 2004 and had invested large amounts of money in developing and marketing the website at the disputed domain name. The Complainant asserts that those statements are both false and fraudulent.
The Complainant contends that at the time the Respondent acquired the disputed domain name, the Complainant's reputation in the substantially identical name and trade mark WIKIJOB was well established and well known in the employment field, receiving 2.7 million unique visitors to its website in 2011. The Complainant provides evidence of extensive online and media promotion and recognition and cites several instances where customers have assumed that the website at the disputed domain name was the Complainant's website.
The Respondent did not formally reply to the Complainant’s contentions but submitted to the Center, out of time, the letter of February 9, 2012 discussed above.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated substantial use and reputation in the trade mark WIKIJOB and owns a Community Trademark dating from August 16, 2010. The substantive part of the disputed domain name differs from the Complainant's trade mark only by the addition of the letter "s". The disputed domain name <wikijobs.com> is therefore, in the opinion of this Panel, substantially identical and confusingly similar to the Complainant's WIKIJOB trade mark.
B. Rights or Legitimate Interests
The disputed domain name resolves to a portal site which offers links to employment related e-commerce sites which offer services substantially the same as, and in some cases in competition with, the services of the Complainant. At the time of the acquisition of the disputed domain name by the Respondent, and the commencement of operation of the Respondent's website, the Complainant's trade mark and reputation were well established. Further, it seems likely that at the time of acquisition of the disputed domain name by the Respondent, the Respondent had actual knowledge of the history of negotiation between the Complainant and previous owners of the disputed domain name. The Panel therefore concludes, on the balance of probability, that the Respondent commenced to use the disputed domain name in the face of knowledge of the Complainant's rights. Such use cannot constitute a use in the bona-fide offering of Respondent's services. The Respondent's claim, in the February 9, 2012 letter, to prior continuous use have been characterized by the Complainant as false and misleading and the Respondent has not replied to that allegation. There is no other apparent basis upon which the Respondent could claim a right or legitimate interest.
The Panel therefore finds that the Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
No information is currently available as to the original registration of the disputed domain name in June 2004. Accordingly, the Panel cannot determine whether or not that original registration was made in good faith. By the time the disputed domain name reached the hands of the Respondent, it had passed through several owners and its only recorded use had been as the subject of offers for sale for USD 25,000. As noted in paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), and the cases there cited, a transfer of a domain name amounts to a new registration. Accordingly, for the purposes of paragraph 4(a)(iii) of the Policy, the date of registration of the disputed domain name is taken to be November 22, 2011. As noted in paragraph 6.B above, by that time the Complainant's WIKIJOB trade mark had been widely used for several years. There is a very substantial probability that the Respondent knew of that use and that the Respondent's purpose in acquiring the disputed domain name was to sell it to the Complainant for a substantial sum, as evidenced by the Respondent's reply to the Complainant's approaches, and alternatively to use the disputed domain name to attract internal users to its website by creating confusion with the Complainant's trade mark.
The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
Having failed to sell the disputed domain name to the Complainant, the Respondent continued to use it to attract Internet users to its website at the disputed domain name and provide, at that website, links to other websites offering the same type of services as the Complainant. It does so in full knowledge of the Complainant's rights and the obvious conclusion is that it does so to generate pay-per-click revenue by taking advantage of the attractive power of the Complainant's trade mark. Such use is, by definition, use in bad faith according to paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name is being used in bad faith.
With regard to the Complainant's failure to disclose the correspondence of January 3, 2011, and February 9, 2011, the Complainant states that it was not aware of it until a copy of the February 9, 2011 letter was sent to its representative in this administrative proceeding on November 14, 2012. It states that it saw only a draft of the January 3, 2011 letter and was not aware it had been sent. The Complainant states that it was not notified of the February 9, 2011 reply by the Complainant’s solicitors then acting for it. Absent evidence to the contrary, the Panel does not reject that explanation.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wikijobs.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: December 10, 2012
ADDENDUM TO ADMINISTRATIVE PANEL DECISION
Pursuant to Administrative Panel Procedural Order No. 1, the Complainant made a further filing on Saturday December 1, 2012. Accordingly the Respondent's reply was due three working days later on Wednesday December 5, 2012. On December 3, 2012 the Respondent advised the Center that a reply would be submitted by December 5, 2012. No reply was submitted by that date but on December 6, 2012, the Respondent filed comments and documents under cover of a letter reading as follows:
"Please find attached documents and below comments. Concern person from legal team is on travel and they are available to prepare perfect legal draft. But as per commitment here am giving more details in Statement documents and proof of documents. Please go through and do needful."
That filing was addressed to the personal email address of the Case Manager rather than to the formal address of the Center at email@example.com and was not discovered until after the Panel's decision was made and communicated to the parties on December 21, 2012 when the Respondent drew attention to his earlier emails and provided copies of the documents filed. These were communicated to the Panel on December 27, 2012. On January 4, 2013, the Panel issued an Order requesting the Registrar to stay the implementation of the Panel's decision of December 10, 2012, pending the Panel’s further consideration and instructions on this issue.
Although the Respondent's reply was submitted one day late and although the Respondent has not submitted a "perfect legal draft", as indicated in his email of December 6, 2012, and notwithstanding the Respondent's consistent failure to adhere to time limits and the requirements of paragraph 5 of the Rules, and in particular paragraph 5(b)(viii) thereof, the Panel in the exercise of its discretion and in order to ensure procedural fairness, has considered the Respondent's informal reply of December 6, 2012.
The Respondent's reply is written in language which is at times difficult to understand, however, the burden of the reply is as follows:
(i) The Complainant's explanation of its failure to refer to the correspondence of January 3 and February 9 of 2012 is untrustworthy.
(ii) The website at the disputed domain name received substantial traffic in the period January 12 to February 12, 2012.
(iii) The Complainant's statements regarding captures of the website at the disputed domain name are false. The Respondent produces a printout purporting to show that the URL is blocked by robot exclusion.
(iv) He is the CEO of Wisdom IT Services and holds the disputed domain name on its behalf and that the previous owners of the disputed domain name have likewise held the disputed domain name on that company's behalf.
(v) Documents which he submits show that the disputed domain name is very valuable.
(vi) The Complainant is relatively small and unsubstantial whilst his company is large and very active.
The Panel does not find the Respondent's submissions persuasive. His mere assertion that the Complainant's explanations of the January 3 and February 9, 2012 correspondence does not serve to rebut that explanation. The Complainant's statement, unlike those of the Respondent, are accompanied by the certification required by paragraph 5(b)(viii) of the Rules, that those statements are accurate.
As to the website captures at “www.archive.org”, the Complainant's Annex 20 to its further filing of December 1, 2012, in response to Administrative Panel Procedural Order No. 1, clearly show captures for October 17, November 16 and December 17, 2012, offering the disputed domain name for sale. If the URL is now blocked that must have occurred after the date of those captures.
The Respondent's claim that previous owners of the disputed domain name have held it on behalf of Wisdom IT Services is likewise unsupported by evidence. The Complainant's Annex 22 gives details of ownership of the disputed domain name back to 2005. In no case is there any indication of a connection to the Respondent or to Wisdom IT Services until the transfer of the disputed domain name to the Respondent on November 22, 2011. None of the addresses shown for the registrants or administrative or technical contacts corresponds to the addresses of either the Respondent or his company, nor do the domain servers listed correspond to the present servers at NS1 and NS2.wikijobs.in. Further, document 5 submitted with the Respondent's reply states that Wisdom IT Services was founded in 2010 and on its website at “www.blog.wisdomjobs.com”, on September 5, 2012 it announced the celebration of its second birthday. This is clearly inconsistent with the claim to succession back to 2004. It also shows that the Respondent entered the on-line job placement field long after the Complainant was well established in that field.
The Respondent's submissions as to the extent of its traffic in early 2012, the value of the disputed domain name and the relative size of the Complainant and the Respondent do not alter the position with respect to the Respondent's bona fide.
The Respondent's reply fails to establish that he has a right or legitimate interest in the disputed domain name and does not rebut the Panel's finding that in November 2011 he registered the disputed domain name in bad faith and that he has subsequently used it in bad faith. Indeed some aspects of his submission tend to reinforce that view.
The Panel therefore orders that the stay in the implementation of its Decision of December 10, 2012 be lifted, and that the Registrar proceed with implementation of that (transfer) decision as notified by the Center to parties and registrar on December 21, 2012.
Desmond J. Ryan AM
Date: January 8, 2013