WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CareerBuilder, LLC v. Hammaad Yousaf, Dl4tech / PrivacyProtect.org, Domain Admin
Case No. D2013-1635
1. The Parties
The Complainant is CareerBuilder, LLC of Chicago, Illinois, United States of America (“USA”), represented by Neal, Gerber & Eisenberg LLP, USA.
The Respondent is Hammaad Yousaf, Dl4tech of Sargodha, Punjab, Pakistan / PrivacyProtect.org, Domain Admin of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <careerbuildersonline.com> is registered with Cloud Group Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 the Complainant on September 24, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 2013.
The Center verified that the Complaint together with the amended 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 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 4, 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
The factual background is based upon information provided by the Complainant.
The Complainant, CareerBuilder LLC, has for more than a decade offered a number of online resources concerned with human resources including personnel recruitment, job search information, and the creation and handling of resumes. The Complainant is well known internationally and has been the subject of comment in leading publications in countries including the USA, the United Kingdom of Great Britain and Northern Ireland, and Australia.
The Complainant owns registered trademarks for CAREERBUILDER including the following:
CAREER BUILDER, United States Patent and Trademark Office (USPTO), principal register, registered July 22, 1997, registration number 2082443, class 42;
CAREERBUILDER, Canadian Intellectual Property Office, registered July 13, 2001, registration number TMA548113, for services of providing access to interactive computer database, via an on-line computer network, in the field of employment availability;
CAREERBUILDER, Community Trademark, Office for Harmonization in the Internal Market, renewed June 30, 2009, registration number 1199363;
CAREERBUILDER, India Trade Marks Registry, registered May 9, 2006, registration number 1450210, class 35;
CAREERBUILDER, Hong Kong SAR Trade Marks Registry, registered July 3, 2006, registration number 300671788, class 35;
CAREERBUILDER.COM, USPTO, principal register, registered March 16, 2004, registration number 2823227, class 35.
The Complainant also owns the domain name <careerbuilder.com> (and <careerbuilders.com>, which redirects to it) and nearly 200 other domain names incorporating CAREERBUILDER trademarks.
No factual information is known about the Respondent except for the information provided to the Registrar for the registration of the disputed domain name, which appears to have occurred on September 17, 2011.
5. Parties’ Contentions
The Complainant contends that the trademark CAREERBUILDER and related trademarks have acquired considerable recognition, notoriety and goodwill internationally and have received the attention of leading publications such as the Wall Street Journal, the New York Times, the Guardian and the Sydney Morning Herald. The Complainant has produced evidence of its ownership of the trademarks listed in section 4 above in the form of copies of registration or renewal documents. The string “careerbuilder”, corresponding to the Complainant’s trademarks, is also incorporated into each of 194 domain names owned by the Complainant in a list it has produced.
The Complainant contends that the disputed domain name <careerbuildersonline.com> comprises the possessive form of its trademarks, e.g., “careerbuilder’s”, the apostrophe of which cannot be a part of an Internet domain name in the present context, and that the additional component “online” is a highly descriptive term. The descriptive term does not avoid confusion between the disputed domain name and the Complainant’s trademarks and may increase confusion because of the online nature of the Complainant’s business. The Complainant contends that the disputed domain name is confusingly similar to its trademarks.
The Complainant further contends that the Respondent cannot establish a legitimate right or interest in the disputed domain name. The Complainant’s trademark registrations pre-date by some years the registration of the disputed domain name. The Complainant has no relationship with the Respondent and has not consented to the disputed domain name. The Complainant expressed its objection to the disputed domain name in letters to the Respondent’s Internet Service Provider (ISP) on October 19, 2012, October 24, 2012, and November 28, 2012, which resulted in temporary disablements. By July 2013 the Respondent had changed its ISP, indicating an awareness of a source of objection to the disputed domain name.
The Complainant contends that the Respondent cannot acquire trademark rights in the disputed domain name merely by its registration. The usage of the disputed domain name is not in connection with a bona fide offering of goods or services because it trades intentionally on the Complainant’s trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The content of the Respondent’s corresponding website comprises advertisements and large numbers of articles that the Complainant alleges are copyrighted articles taken from a website run by America Online and the Complainant. The Respondent’s website advertisements offer links to third party websites such as “www.livecareer.com” and “www.myperfectresume.com” that offer services in direct competition with the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Given the notoriety of the Complainant’s trademarks it is implausible that the Respondent was unaware of them. The Respondent’s action in moving the disputed domain name to an overseas ISP after it has been disabled by the previous ISP is indicative of its awareness of the Complainant.
The Complainant contends that the Respondent is using the disputed domain name in bad faith by its display of extensive copy taken from the website operated by the Complainant and America Online. The Respondent’s intention is to derive commercial gain by offering visitors links to the websites of advertisers.
The Complainant contends that the Respondent’s use of a proxy service in order to attempt to conceal his identity is further evidence of bad faith.
The Complainant has cited a number of previous decisions under the UDRP that it considers to be of precedential value.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent was initially named as PrivacyProtect.org, a privacy service. The Complaint was amended to add the name of Hammaad Yousaf after the Registrar notified the Center that this name had been provided by the registrant of the disputed domain name.
The Center attempted to send Written Notice of the Complaint by courier to Hammaad Yousaf at the registrant address provided, but was returned for the reason “Receiver postcode and/or city are not valid”. Written Notice of the Complaint was sent by courier to PrivacyProtect.org, however an automated reply to an email sent to PrivacyProtect.org stated that all postal mail sent to its address will be rejected and that contact with a domain name owner could only be made via a link on the PrivacyProtect.org website. An email notification of the Complaint sent to the Respondent at “firstname.lastname@example.org” was undeliverable. There was no acknowledgement of receipt of the notification, or proof that it reached the Respondent, from his nominated email address “[ ]@yahoo.com”.
The use of a privacy service may be for legitimate reasons. It may, however, be used in an attempt to avoid service of a complaint. As said by the panel in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
“[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The Panel is satisfied that the Center has fulfilled its obligations in attempting to contact the Respondent in order to effect service of the Complaint in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The Complainant is required to prove that it has rights in a trademark to which the disputed domain name is confusingly similar. The Complainant has produced adequate evidence of its ownership of the registered trademarks CAREER BUILDER, CAREERBUILDER and CAREERBUILDER.COM, with registrations dating from at least as early as 1997 in the instance of CAREER BUILDER.
The disputed domain name <careerbuildersonline.com> differs from the Complainant’s trademarks, first by the addition of the letter “s”. The Panel finds no effective distinction between the Complainant’s trademarks, being those of a company that provides resources for the building of a career, and “careerbuilders”, reflecting the colloquial tendency for people to pluralise some company names and trademarks, or as suggested by the Complainant, to apply the possessive case.
The disputed domain name adds the phrase “online” to the Complainant’s trademarks. The phrase “online” is an ordinary descriptive term well known to Internet users. The Panel finds on balance that the term “online” creates no distinction between the disputed domain name and the Complainant’s trademarks, and in fact enhances confusing similarity between the two because the Complainant’s business is conducted substantially online.
The gTLD designation such as “.com” by convention may generally be disregarded in the determination of confusing similarity. It need not be disregarded in respect of the Complainant’s trademark CAREERBUILDER.COM because “.com” forms part of the similarity between the disputed domain name and the trademark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated prima facie that it has no relationship with the Respondent, who has not been licensed or authorised in any way to use the Complainant’s trademarks.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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 consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are illustrative and rights or legitimate interests may be established otherwise to the satisfaction of the Panel.
The Respondent has made no submissions or replied at all. The decision is not made by default, nevertheless the Panel cannot anticipate any way in which the Respondent could claim to have been generally known by the disputed domain name, and has considered the Complainant’s arguments to the effect that the Respondent’s use of it is not fair or noncommercial, exploits the Complainant’s trademarks, and is therefore not bona fide. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
Evidence in the form of screen prints produced by the Complainant shows a number of pages from the website to which the disputed domain name resolves. They have a polished and professional appearance, with keys to other pages and a clickable archive going back to September 2011 (the time of registration). Lead pages are headed “Career Builders” and “We Provide Best Information about Careers”. The Complainant has also produced a number of pages from “www.jobs.aol.com”, being the website that the Complainant has stated it operates with America Online. Many paragraphs and short articles on the Respondent’s website are identical to those on the America Online website. Lists of job advertisements on both websites are identical. The Respondent has not contested the Complainant’s assertion that the direction of copying has been to the Respondent’s website from the America Online website.
In the absence of any indication to the contrary, it may reasonably be concluded that the Respondent’s website has been constructed and operates for a commercial motive. The website displays advertisements with clickable links, for example, “Perfect Interview Answers ... CLICK HERE to watch our FREE presentation”, and “Work at Home Jobs (2013)”. The pattern of the websites to which such links connect is clearly recognisable as leading, via “free” incentives, ultimately to sources of paid goods and services.
Having regard to all the documentary evidence and on the balance of probabilities, the Respondent is found to be operating a pay-per-click business, whereby he collects revenue in return for referrals from his website to those of advertisers. The pay-per-click business model is common on the Internet and may be legitimate in and of itself as a way of subsidising a website or of earning money in return for the referral service provided. If, however, the proprietor of a pay-per-click operation attracts Internet visitors by the incorporation of another’s trademark without authority into the domain name, then it may cease to be bona fide or legitimate.
The Panel finds on balance, in the terms of paragraph 4(b)(iv) of the Policy, that the Respondent in this case has incorporated the Complainant’s trademarks into the disputed domain name in order to attract Internet users to his website by confusion, at least initially, with the Complainant’s trademarks as to the endorsement of the Respondent’s website and the services or goods available through it, and has done so for commercial gain. The Panel further finds on the balance of probabilities that the disputed domain name was registered for the purpose for which it has been used. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
The Respondent used the services of a privacy service, such as may well have a legitimate purpose, but in conjunction with doing so appears not to have provided a legitimate or deliverable physical address. The Panel finds the provision of false or deficient contact details to be an aggravating factor in the finding of bad faith in this case (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
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 <careerbuildersonline.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: November 18, 2013