WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CareerBuilder, LLC v. Domain Whois Protect Service / Hemang Infrastructure Private Limited
Case No. D2016-2001
1. The Parties
Complainant is CareerBuilder, LLC of Chicago, Illinois, United States of America (“United States”) represented by Neal, Gerber & Eisenberg, United States.
Respondent is Domain Whois Protect Service of Mumbai, India / Hemang Infrastructure Private Limited of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <careerbilder.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2016, 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 October 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 11, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2016.
The Center appointed Eduardo Machado as the sole panelist in this matter on November 7, 2016. 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 owns numerous trademark registrations throughout the world for the CAREERBUILDER trademark worldwide: Reg. No. TMA548113 in Canada registered on July 13, 2001; International Reg. No. 1199363, registered on June 30, 2009, Reg. No. 692944 in India, registered on May 9, 2006, and Reg. No. T1415073Z in Singapore, registered on September 19, 2004, each covering its CAREERBUILDER mark, just to name a few.
In addition, Complainant maintains Reg. No. 2823227 for CAREERBUILDER.COM, registered on March 16, 2004 in the United States and Reg. No. 2082443 for CAREER BUILDER, registered on July 22, 1997 in the United States.
The disputed domain name was registered on April, 10, 2004.
5. Parties’ Contentions
Complainant alleges that it is a global leader in human capital solutions that has been offering for over a decade a variety of human resource services through its website “www.careerbuilder.com”, and owns all rights, titles and interests in the CAREERBUILDER marks in connection with the these services in India, the United States, and in many other countries around the world.
Complainant states that it has invested enormous time, effort and resources providing its services under and in connection with the CAREERBUILDER marks and building the significant goodwill associated with its CAREERBUILDER marks that have developed considerable recognition.
Complainant affirms that its trademarks and services have garnered media attention in international publications such as the Wall Street Journal, the New York Times, the London Guardian, the Sydney Morning Herald, and other such internationally known publications throughout the world.
Also, Complainant maintains numerous trademark registrations covering the CAREERBUILDER marks in jurisdictions around the world, including Canada, Europe, India, Singapore and United States. Complainant’s trademarks and services are promoted through numerous websites, including the website maintained at <careerbuilder.com>. With this respect, Complainant owns nearly 200 domain names worldwide that incorporate the CAREERBUILDER marks, which further establishes Complainant’s rights in its trademarks and shows its geographical reach, notoriety and fame.
Complainant defends that Respondent has made no bona fide offer of goods or services, as it registered the disputed domain name in order to trade upon the significant goodwill and extensive promotional efforts associated with the CAREERBUILDER marks, using the disputed domain name to redirect traffic to a parked page which offers pay-per-click links that divert Internet traffic to websites offering competing services with those of Complainant.
Moreover, Complainant asserts that it has never consented to the registration of the disputed domain name by Respondent and has sent a letter to the registrant and Registrar via email, demanding an immediate transfer of the disputed domain name <careerbilder.com>.
Complainant argues that Respondent has intentionally used a spelling variation of the CAREERBUILDER mark with the objective of taking advantage of the Internet users, in a typosquatting practice, affirming that Respondent has been condemned in many UDRP panel decisions for this behavior. Complainant also states that the disputed domain name keeps the same pronunciation as the original mark, as the disputed domain name simply omits the letter “u” in the CAREERBUILDER mark.
Furthermore, Complainant states that Respondent has no right or legitimate interest in the disputed domain name, as the mere registration of a domain name does not confer trademark rights upon the registrant, and that such rights can arise only through the bona fide offering of goods or services. Respondent has not made, nor is it making, a legitimate noncommercial or fair use of the disputed domain name, but is using it to redirect to a parked webpage that provides hyperlinks to third-party sites, including websites advertising or offering services that compete with those of Complainant, and has infringed Complainant’s trademark by attempting to attract users to its site, creating confusion. Also, Respondent chose the disputed domain name to intentionally trade on the renown of Complainant’s trademark.
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith and with full knowledge of Complainant’s marks, given its renown and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site, which contains pay-per-clicks links.
Complainant also states that Respondent has registered at least 970 domain names, many of which infringe other well-known trademark and mirror well-known websites, illustrating that it has a pattern of registering infringing domain names in bad faith. Respondent’s bad faith is further evidenced by its failure to respond to Complainant’s objections.
Finally, Complainant states that Respondent’s identity as a proxy service further evidences bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, Complainant must prove each of the following:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights;
(ii) that Respondent has no rights or no legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of the CAREERBUILDER mark, having registrations for CAREERBUILDER as a trademark in various counties throughout the world, including Canada, Europe, India, Singapore.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The Panel agrees that the mere exclusion of letter “u” in the word “builder” is not enough to distinguish the disputed domain name from Complainant’s marks and to escape a finding of confusing similarity. In fact, the website at the disputed domain name bears the CAREERBUILDER trademarks, which are duly registered by Complainant.
Also, the mere addition of the generic Top-Level Domain (“gTLD”) “.com” can be disregarded when assessing whether the disputed domain name is identical or confusingly similar to the trademark. See Tinynova LLC v. Chris Edwards, Orion Inactive, WIPO Case No. D2016-0804 (“the disputed domain name incorporates the denominative part of the mark BACKIT in its entirety, with the mere addition of the generic Top-Level Domain suffix “.com”, which can be disregarded being a mere technical requirement of registration”).
The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive list of examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are (i) if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services; (ii) if a respondent has been commonly known by the domain name or (iii) if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
As to the second requirement, the Panel is satisfied that Respondent has no rights or legitimate interests in using the disputed domain name. In particular, Respondent does not appear to have used or made any preparations to use the disputed domain name in connection with any bona fide offering of goods or services prior to the dispute in accordance with paragraph 4(c)(i) of the Policy.
The website at the disputed domain name displays pay-per-click advertising links, which redirect Internet users to third party websites offering competing services with those of Complainant. Therefore, Respondent has not been making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, as the Panel considers it likely that Respondent is generating advertising or affiliate referral revenue from the pay-per-click links provided at the disputed domain name.
Panels have generally recognized that the use of a domain name to post parking and landing pages or pay-per-click links, based on the trademark value of a third party, is considered unfair use, resulting in misleading diversion (see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In this case, the advertising links are clearly related to the value of Complainant’s CAREERBUILDER mark.
Furthermore, nothing in the record indicates or suggests that Complainant has authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the CAREERBUILDER trademark. Furthermore, the Panel notes that Complainant has prior rights in the CAREERBUILDER trademark which precede Respondent’s registration of the disputed domain name.
Moreover, there is no evidence to suggest that Respondent has ever been known by “CareerBuilder” or any name identical or similar to the disputed domain name, and neither the WhoIs information indicates otherwise.
Therefore, considering that Respondent did not present any allegations or evidence of rights or legitimate interests it might have in the disputed domain name, Policy, paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owners of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) 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, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location
The Panel notes that Respondent has registered the disputed domain name through a proxy registrant, which as the panel stated in The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156, “would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy”.
Also, the Panel believes further that Respondent has intentionally misspelled Complainant’s trademark in order to attract the flow of Internet users who have mistyped Complainant’s URL address, enabling Respondent accordingly to increase the traffic to its website, “www.careerbilder.com”, and derive more revenues as a result. Such practice is known as typosquatting and has been clearly condemned in various panelists’ decisions.
It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with complainant, such use amounts to use in bad faith. See Dymocks Holdings Pty Ltd v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0560.
Moreover, the Panel finds that Respondent has registered several domain names, many of which include well-known third party trademarks and mirror well-known websites, which illustrates that it has a pattern of registering domain names in bad faith.
In light of the above, and in the absence of a Response and any evidence rebutting Complainant’s contentions, the Panel finds that Complainant has succeeded on the third element 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 <careerbilder.com> be transferred to Complainant.
Date: November 21, 2016