WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CADD Centre Training Services Pvt Ltd v. Hola Domains, Hola Dominios Limitada
Case No. D2017-0924
1. The Parties
The Complainant is CADD Centre Training Services Pvt Ltd of Chennai, India, represented by DePenning & DePenning, India.
The Respondent is Hola Domains, Hola Dominios Limitada of San Jose, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <skillease.com> (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 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. On May 23, 2017, the Center received an unsolicited amended Complaint (correcting an error in the contact details of the Respondent) from the Complainant.
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 the Respondent of the Complaint, and the proceedings commenced on May 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2017.
The Center appointed John Swinson as the sole panelist in this matter on July 7, 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 CADD Centre Training Services Pvt Ltd. The Complainant was established in 1988 and is a provider of skill training in computer aided design and engineering, graphics and project management for various industries including engineering, interior and fashion design, automotive design and primary education. According to the Complaint, the Complainant has more than 500 franchise centres across 24 countries.
In 2005, the Complainant established a staffing division called Skillease which offers recruitment support to candidates enrolled in its training programs and a staffing solution to employers. The Complainant claims unregistered trade mark rights in SKILLEASE (the “Trade Mark”) since 2005.
The Complainant has applied to register trade marks in India which remain pending. Application number 3307025 was filed on July 12, 2016 for the following device mark:
The Complainant owns a domain name which incorporates the Trade Mark, being <skillease.co.in>, at which it provides a “job portal” to users who are seeking jobs (the “Complainant’s Website”). The Complainant’s Website also serves as a database for employers looking for niche skills. According to the Complaint, the domain name for the Complainant’s Website was registered on July 6, 2007.
The Respondent is Hola Domains, Hola Dominios Limitada and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on May 4, 2016.
At the time that the Complaint was filed, the website associated with the Disputed Domain Name featured hyperlinks to pages that appear to advertise the Disputed Domain Name for sale, that read “Domain For Sale”, “5+ Payment Options” and “Click Here to Buy” along with a statement that “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers.”
At the time of this decision, the Disputed Domain Name resolves to a website with pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant makes the following submissions.
Unregistered Trade Mark Rights
Since the launch of Skillease in 2005, the Complainant has continuously used the Trade Mark in connection with its provision of recruitment and employment services.
The Trade Mark has developed an extensive reputation in India and internationally, with the Complainant’s global network of customers currently including 1 million students. The Trade Mark has acquired distinctiveness, with connotations relating to networking opportunities in various professional fields, being a one-stop shop for job seekers and employers, and excellence in sourcing, managing and presenting high caliber candidates to clients.
The Complainant has received promotion from various other job portals, and provided evidence to demonstrate that the Complainant consistently advertises the Trade Mark in print, electronic media and at fairs and exhibitions.
Identical or Confusingly Similar
The Disputed Domain Name is almost identical or confusingly similar to the Trade Mark. The Disputed Domain name incorporates the Trade Mark in its entirety.
The addition of the generic Top Level Domain (“gTLD”) “.com” is disregarded when considering identity between the Disputed Domain Name and the Trade Mark because the gTLD is a “functional necessity rather than an arbitrary trademark choice” (see Herbalife International, Inc. v. Herbalife.net, WIPO Case No. D2002‑0234).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not making any legitimate, noncommercial or fair use of the Disputed Domain Name, as evidenced by the parked web page. The Respondent initially approached the Complainant with an offer to sell the Disputed Domain Name further exemplifying that the Respondent’s sole intention in registered the Disputed Domain Name was to obtain undue benefits, and not to use it for any legitimate purpose. No evidence was provided to demonstrate this.
The Complainant has no connection with the Respondent and has not licensed or otherwise permitted the Respondent to use the Trade Mark or to register the Disputed Domain Name, which incorporates the Trade Mark.
Registered and Used in Bad Faith
The Complainant enjoys good fame, reputation, image and goodwill which has been built up over the last 11 years under the Trade Mark. By registering the Disputed Domain Name, the Respondent sought to take advantage of the reputation of the Trade Mark.
The Respondent registered the Disputed Domain Name for the dishonest motive of selling it for valuable consideration. The Complainant sent the Respondent a cease-and-desist letter dated October 14, 2016 requesting voluntary transfer to which the Respondent did not reply. The Complainant subsequently attempted to contact the Respondent to make an offer to purchase the Disputed Domain Name, however the Respondent remained unresponsive. (Other than the cease-and-desist letter, no evidence was provided by the Complainant to show this correspondence between the Complainant and the Respondent.)
By using the Disputed Domain Name, which is deceptively similar to the Trade Mark, the Respondent has intentionally attempted to create an impression of an association between the Complainant and the Respondent, and confusion in the minds of the public with respect to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name.
The use and existence of the Disputed Domain Name causes the Complainant to lose goodwill and reputation in the Trade Mark, and damage to the Complainant’s business.
The Respondent did not reply to the Complainant’s submissions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant’s submissions in relation to its rights in the Trade Mark referred to its trade mark application in India. However, a pending trade mark application, by itself, is not sufficient to establish trade mark rights within the meaning of paragraph 4(a)(i) of the Policy.
The Complainant also claims unregistered or common law rights in the Trade Mark. In order to successfully assert unregistered or common law trade mark rights for the purposes of the UDRP, the Complainant must show that the Trade Mark has become a distinctive identifier which consumers associate with the Complainant’s goods or services (i.e., that the Trade Mark has acquired a “secondary meaning”).
The Complainant has provided evidence of its use of the Trade Mark (described above) and its significant customer base. For the purposes of the Policy, the Panel considers that the Complainant has acquired common law rights in the word “Skillease”, by virtue of its use as a Trade Mark and use in the domain name for the Complainant’s Website. The earliest evidence of use of the Trade Mark is dated August 8, 2010 which precedes registration of the Disputed Domain Name by about 5 years.
The Panel considers that the Disputed Domain Name is identical to the Trade Mark. The Trade Mark has been incorporated into the Disputed Domain Name in its entirety with no change or further terms added.
In this case, the gTLD “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored.
In light of the above, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel does not accept the Complainant’s submission that the alleged offer by the Respondent to sell the Disputed Domain Name proves that the Respondent lacks legitimate interests. The Complainant did not provide any evidence of correspondence to demonstrate that the Respondent made any such offer to the Complainant. Even if there was such evidence, an offer to sell a domain name, without more, is not sufficient to demonstrate a lack of legitimate interests in the domain name.
However, based on the following, the Panel finds that the Complainant has made out a prima facie case on this element:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name is a place holder website without substantive content, featuring sponsored advertisements which appear to be offering to sell the Disputed Domain Name. In applying paragraph 4(c) of the Policy to the circumstances, the Panel does not consider this to be a bona fide use of the Disputed Domain Name.
- The Panel accepts the Complainant’s submission that the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark or Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Previously, the website associated with the Disputed Domain Name did not include any content suggesting such use.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant has been operating for almost 30 years. The Complainant has provided evidence of its use of the domain name <skillease.co.in>, which incorporates the Trade Mark which the Complainant has held and used since 2007.
The Disputed Domain Name was registered on May 4, 2016. In light of the reputation of the Complainant and the Trade Mark, and without the benefit of a reply from the Respondent it is probable that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. Here, the Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Complainant and the Trade Mark by registering the Disputed Domain Name. This is bad faith registration.
At the time that the Complaint was filed, the Disputed Domain Name resolved to a website which appear to be offering to sell the Disputed Domain Name, with an accompanying statement that they are third party advertisements and that there is no relationship between the advertisers and the domain name owner or service provider. With respect to “automatically” generated links, if that is the situation here, previous panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name. Neither the fact that such links are generated by a third party, nor the fact that the Respondent itself may not have directly profited from the advertising, would prevent a finding of bad faith.
The Respondent appears to be an entity whose core business is domain name holding. Previous UDRP panels have held that domainers, undertaking bulk purchases or automated registrations, have an affirmative obligation to avoid the registration of trade mark-abusive domain names. While the Complainant does not hold any registered trade marks, an Internet search of the term “Skillease” would have been sufficient to enable the Respondent to avoid bad faith registration and use. In this case, there is no evidence before the Panel that shows the Respondent has undertaken good faith efforts to screen such registration of the Disputed Domain Name.
The Panel is satisfied that the Respondent is usingthe Disputed Domain Name in bad faith. The Panel cannot conceive of any legitimate use that the Respondent is making of the Disputed Domain Name in these circumstances.
In the Panel’s opinion, the only plausible explanation for the Respondent registering and using the Disputed Domain Name is to exploit the reputation of the Trade Mark, without any rights or authorisation to do so.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the 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 <skillease.com> be transferred to the Complainant.
Date: July 21, 2017