WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Totaljobs Group Limited v. Faisal Khan, CreativeMode Ltd
Case No. D2017-0295
1. The Parties
The Complainant is Totaljobs Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Faisal Khan, CreativeMode Ltd of London, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <total.jobs> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. On March 13, 2017, the Center received an email communication from the Respondent requesting a 14-day extension of the deadline to file a Response. The Center granted an extension of 10 days and notified the Parties that the new due date for the Response was March 24, 2017. The Response was filed with the Center on March 24, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 28, 2017. 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 Complainant is an online recruitment company based in the UK. It owns several trade mark registrations, including, inter alia,European Union (“EU”) trade mark registration no. 001407295 for TOTALJOBS, which was registered in 2000.
The Domain Name registered in 2015 has been attached to a site offering jobs which is unconnected with the Complainant, but contains content copied from the Complainant’s web site and a similar logo to that used by the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is one of the largest and fastest growing online recruitment companies in the UK. It is the owner of trade mark registrations for TOTALJOBS since 2000 in, inter alia, the EU in classes 9, 16 and 35. The TOTALJOBS mark is well-known.
The Domain Name was registered on October 23, 2015 and directed to a page advertising jobs.
The Domain Name incorporates the Complainant’s TOTALJOBS mark in its entirety. As stated in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Top-Level suffix may itself form part of the relevant trade mark and may be assessed for purposes of the first element of the UDRP. In the present case the term “jobs” is part of the Complainant’s trade mark and can be taken into account in order to assess identity or confusing similarity.
The Respondent is not commonly known by the Domain Name. The Respondent has not acquired trade mark or service mark rights and the Respondent’s registration and use of the Domain Name was not authorised by the Complainant.
Using the Domain Name to host a web site which displays advertisements directly copied from other job recruitment sites including the Complainant’s is not a legitimate or fair use under the Policy.
Since the Respondent has copied jobs from the Complainant’s web site and displays logos which apart from some insignificant differences are identical to Complainant’s trade mark, the Respondent must be aware of the Complainant and its rights.
By imitating the Complainant’s business and web site, the Respondent is creating a high likelihood of confusion with the Complainant’s trade mark as to the source, affiliation or endorsement of the web site attached to the Domain Name and emails emanating from the Respondent. The Respondent is intentionally attracting for commercial gain Internet users to its web sites by creating such a likelihood of confusion.
The fact that the content is copied from other job recruitment web sites clearly indicates the Respondent has no legitimate intention of operating a genuine business on the web site, and the copied content only serves to deceive Internet users into registering an account on the web site.
The Respondent’s contentions can be summarised as follows:
The Respondent is a tech entrepreneur working on startups aimed at the best use of technology for mankind.
The Complainant had the opportunity to obtain the Domain Name in 2015, but they ignored it and after two years have filed this Complaint.
There are many other companies that have registered rights for TOTAL. Such companies coexist. The trade mark system allows companies to use the same mark for different or even the same goods and services if there is no confusion. If rights are infringed, legal action may be taken or registered trade marks opposed.
The Respondent’s target market is real estate and property which does not conflict with the interest of the Complainant.
The Complainant never contacted the Respondent regarding this dispute before. As soon as the Respondent received the Complaint the web site content was removed.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the element “total” registered in the new Top-Level Domain “.jobs”. The Panel agrees with the Complainant that as stated in paragraph 1.2 of the WIPO Overview 2.0, the Top-Level suffix may itself, in certain cases, be taken into account if it appears to form part of the relevant trade mark in contention. In the present case the Complainant’s trade mark is TOTALJOBS and the Domain Name is <total.jobs>. As such “.jobs” can be taken into account in order to assess identity or confusing similarity as it is part of the mark that the Domain Name must be compared with. The dot of the Domain Name is insufficient to distinguish the Domain Name from the Complainant’s trade mark in this case.
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy to the TOTALJOBS mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name or authorised by the Complainant in any way and he does not contend otherwise.
The Respondent contends that he intends to use the Domain Name for a real estate or property business. However, he has not presented any actual evidence of this and the Domain Name has, in fact, been used to advertise jobs on a site which was ostensibly an online recruitment company operating in competition with the Complainant. The Respondent does not deny that the Domain Name has been used to advertise jobs or that material has been copied from the Complainant’s web site and use has been made of a logo very similar to the Complainant’s logo on the site. The use of the Domain Name was misleading, would lead customers to believe the web site attached to the Domain Name was the web site of the Complainant and, as such, such use cannot be a bona fide use in relation to goods or services under the Policy. Accordingly the trade mark arguments the Respondent seeks to raise are not relevant to the facts of this case under the UDRP.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent’s use of the site attached to the Domain Name is commercial in nature and he has been using the Domain Name to suggest that the web site attached to it is the official site of the Complainant in a confusing manner by use of material and logos copied from the Complainant. The Respondent does not address this in his Response and does not deny that he was aware of the Complainant at the time of registration or explains why material and logos copied from the Complainant have been used on the web site attached to the Domain Name. There is no evidence that the site was merely a front company to get people to open accounts as the Complainant contends. However, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site under Policy 4(b)(iv).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
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 <total.jobs> be transferred to the Complainant.
Date: April 7, 2017