WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teleperformance v. ICS INC. / Contact Privacy Inc. Customer 0131175994
Case No. D2013-0035
1. The Parties
Complainant is Teleperformance of Paris, France, represented by Inlex Conseil, France.
Respondent is ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“U.K.”) / Contact Privacy Inc. Customer 0131175994 of Toronto, Canada.
2. The Domain Name and Registrar
The disputed domain name <teleperformancejobs.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 9, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 9, 2013.
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” 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2013.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on February 12, 2013. 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
Complainant is the owner of numerous registrations for the trademark TELEPERFORMANCE which pre-date the registration of the disputed domain name. The mark is registered internationally, including in the European Community, and separately in the U.K. and France, as well as in the United States of America and many other countries. Complainant owns nearly 400 registrations for trademarks comprising the word TELEPERFORMANCE in countries throughout the world.
Complainant owns the domain names <teleperformance.com>, registered October 28, 1995; <teleperformance.org>, registered April 25, 2000; <teleperformance.biz>, registered November 19, 2001 and <teleperformance.info>, registered November 7, 2003.
The disputed domain name was registered on May 7, 2012.
5. Parties’ Contentions
Complainant asserts that it was founded in 1978 and is a worldwide leading provider of outstanding customer experience in the field of call center activities. It operates 98,000 computerized work stations across 250 contact centers in 49 countries, conducting programs in more than 66 different languages and dialects on behalf of major international companies operating in various industries.
Two UDRP panels have previously recognized that the company and its name Teleperformance are well known. See S.R. Teleperformance v. At Random, WIPO Case No. D2005-0193; and Teleperformance v. Click Cons.Ltd., WIPO Case No. D2008-0242.
Complainant changed its business name in 2006 from SR Teleperformance to Teleperformance. As a result of its reputation and its numerous trademark registrations, Complainant asserts that it has rights in the trademark or service mark TELEPERFORMANCE.
Complainant asserts that the disputed domain name <teleperformancejobs.com> is substantially identical to Complainant’s TELEPERFORMANCE trademarks, domain names and company name. Complainant asserts that the disputed domain name <teleperformancejobs.com> incorporates entirely Complainant’s trademark and company name. Complainant asserts that the addition of the term “jobs” to its company name does not eliminate the similarity between Complainant’s marks and the disputed domain name. To the contrary, Complainant asserts that the term “jobs” would lead Internet users to believe the domain name is a recruitment page for Complainant. Complainant asserts that the addition of the generic Top-Level Domain (gTLD) “.com” is irrelevant in determining the similarity of a domain name with a trademark and to avoid confusion.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that the disputed domain name resolves to a parking page which includes a link at the top labeled “make an offer”, leading the Internet user to a page where they can offer to purchase the disputed domain name. Complainant asserts that this shows Respondent’s lack of interest in the disputed domain name, and that it was registered only for commercial gain.
Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent could not have ignored the existence of Complainant’s company and its websites in registering the disputed domain name, keeping in mind the notoriety of Complainant and the prior recognition that its company name and trademark are well known.
Complainant asserts that its trademark TELEPERFORMANCE is arbitrary and distinctive to designate call center activities, and Respondent’s duplication of this term in its domain name cannot be coincidental and illustrates Respondent’s bad faith. Complainant asserts that it sent Respondent’s Registrar a communication by letter and e-mail, informing Respondent that the disputed domain name constitutes a counterfeit of Complainant’s rights and a cybersquatting infringement. Complainant further sent a reminder of this letter to the Registrar. Complainant received no reply to its letter or to the reminder.
Complainant asserts that the parking page to which the disputed domain name resolves contains two links on its left-hand side that use Complainant’s trademark and trade name TELEPERFORMANCE. Both of these lead to the websites of job search operators, some of which promote job offers at Complainant. Complainant asserts this demonstrates that Respondent uses Complainant’s notoriety and image to attract traffic to sponsored links in order to make commercial gain.
Respondent did not reply to Complainant’s contentions, and therefore is in default.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
Where, as here, a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel agrees that the disputed domain name <teleperformancejobs.com> is confusingly similar to Complainant’s registered trademark TELEPERFORMANCE. Rather than serving to distinguish Respondent’s domain name from Complainant’s registered trademark, adding the generic term “jobs” to the registered term TELEPERFORMANCE is likely to lead Internet users to believe that the domain name is a recruiting website for Complainant. In any case, adding the common term “jobs” to Complainant’s trademark does not mitigate the confusing similarity between the disputed domain name and the mark. See Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634. The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Respondent has neither asserted nor proved any relationship with Complainant. There is no evidence that Complainant has licensed or authorized Respondent to use Complainant's trademarks, or that Respondent has any authorized relationship with Complainant or otherwise has permission to apply for any domain name incorporating Complainant’s name and well-known trademark. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the only “use” Respondent has made of the disputed domain name is to resolve to a parking page offering the domain name for sale, and apparently as the source of “click-through” revenue from job search sites. That is not a legitimate use. See United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
From Respondent’s default in this proceeding, its combination of Complainant’s well-known trademark with the word “jobs,” the offer of the disputed domain name for sale, the in-line links on its webpage to job search websites, including jobs at Complainant, and from Respondent’s failure to respond to Complainant’s correspondence, this Panel draws an inference that Respondent was aware of Complainant’s well-known trademark by the facts that it combined the descriptive word “jobs” with Complainant’s mark TELEPERFORMANCE; and that Respondent intended to reap click-through revenue by confusing Internet users into believing that its website at <teleperformancejobs.com> is sponsored by or affiliated with Complainant.
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 <teleperformancejobs.com> be transferred to Complainant.
Jordan S. Weinstein
Date: February 26, 2013