WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediahuis NV and House of Recruitment Solutions, Besloten vennootschap v. Global Domain Privacy Services Inc. / Tilbas Gignas
Case No. D2020-0954
1. The Parties
Complainants are Mediahuis NV and House of Recruitment Solutions, Besloten vennootschap, Belgium, represented by Gevers Legal NV, Belgium.
Respondent is Global Domain Privacy Services Inc., Panama / Tilbas Gignas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jobat.website> is registered with URL Solutions, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2020, 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 Complainants on April 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on April 24, 2020.
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 April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2020.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 22, 2020. 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
Complainants are Mediahuis NV (referred hereto as Complainant 1) and House of Recruitment Solutions, Besloten vennootschap (referred hereto as Complainant 2).
Complainant 1 is a Belgian newspaper and magazine publishing, distribution, printing, TV, radio and online media founded in 2014. Complainant 1 publishes daily newspaper titles in Belgium, the Netherlands and Ireland as well as regional titles, and is involved in broadcasting a number of Dutch and French language TV and radio stations.Amongst the most famous brands of Complainant 1 are the newspapers “HET NIEUWSBLAD”, which is an easy-to-read Belgian newspaper, and “DE TELEGRAAF”, which is one of the main newspaper in the Netherlands. Furthermore, Complainant 1 owns some radio station brands such as NOSTALGIE, a Dutch and French speaking radio station for music from the 1970’s, 1980’s and 1990’s, leader in the French-speaking part of Belgium, and “NRJ”, which is part of the largest international radio network, operating in more than 15 countries and focusing on popular music.
Complainant 1 also owns a newspaper named “JOBAT”, which started as a small newspaper used as supplement of its larger newspapers, focusing on work, vacancies and career tips. However, over the years “JOBAT” has evolved into the number one recruitment platform in Belgium. In June 19, 2019, Complainant 1 has founded Complainant 2 together with a third party, aiming to reunite all its activities relating to recruitment and job vacancies, including the activities performed under the trademark JOBAT, in one new company. Complainants have now operating “JOBAT” business for years, not only as newspaper about work and containing job vacancies, but also an Internet platform operated on the website “www.jobat.be” where thousands of job vacancies can be consulted by those looking for a job.
Complainant 2 is, in summary, a subsidiary of Complainant 1. This is why Complainant 1, together with Complainant 2, are the formal owners of JOBAT trademark registrations and have common legal interest in the disputed domain name, as can be verified below:
- Benelux Registration for (composed mark) No. 0777349, registered on April 6, 2006, owned by House of Recruitment Solutions, Besloten vennootschap, to identify goods in class 16 and services in classes 35, 41 and 42;
- Benelux Registration for JOBAT (word mark) No. 0831679, registered on October 19, 2007, owned by Mediahuis NV, to identify goods in class 16 and services in classes 35, 41 and 42;
- Benelux Registration for (composed mark) No. 1402494, registered on December 12, 2019, owned by House of Recruitment Solutions, Besloten vennootschap, to identify goods in class 16 and services in classes 35, 38 and 41; and
- French Registration for (composed mark) No. 3673894, registered on September 3, 2009, owned by Mediahuis, to identify goods in class 16 and services in classes 35 and 41.
At last, it is important to note that the disputed domain name <jobat.website> was registered by Respondent on January 7, 2020 and resolves to a pay-per-click (“PPC”) website.
5. Parties’ Contentions
Complainants submit that the disputed domain name <jobat.website> is confusingly similar to their registered trademark JOBAT. This is because the disputed domain name is entirely and solely composed of the element “jobat” and, therefore, will likely be associated with the mentioned trademark. In this regard, Complainants also plead that the Top-Level Domain (“TLD”) “.website” does not change anything to the fact that the disputed domain name is identical to Complainants’ trademark, since the TLD is a necessary component for the registration and use of a domain name.
Complainants also claim that the disputed domain name is being used as a so called PPC website, meaning that the page hosted by the disputed domain name show links which lead to websites ran by Complainants’ competitors. Therefore, the Internet users are induced to assume that the website to which they are being redirected when clicking on the PPC link is being exploited by Complainants, which is not true.
Furthermore, Complainants argue that Complainant 1 also owns the identical domain names <jobat.be> and <jobat.online>, registered respectively on August 10, 1998 and August 28, 2015. Therefore, considering their previous ownership of identical domain names and trademarks containing the trademark JOBAT, Complainants affirm they must prevent the use of identical or confusingly similar signs by third parties, as well as other player’s behavior that may harm Complainants’ business.
This way, paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules would be fulfilled.
Complainants plead that Respondent does not have any valid rights before the trademark JOBAT and that Respondent was never authorized in any way by Complainants to register or use the disputed domain name. In addition, Complainants affirm that Respondent is not commonly known by the disputed domain name and therefore it could have chosen any other domain name, specially because the word “jobat” does not have a dictionary meaning, it is an invented word that became a distinctive trademark. These facts would indicate that Respondent cannot claim any trade name rights over the trademark JOBAT, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.
Moreover, Complainants submit that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services nor to make a legitimate noncommercial or fair use of the disputed domain name. Indeed, the disputed domain name is being used to host a parked page containing terms written in English and in French related to Complainants’ activities under the brand JOBAT, for example, “Find Jobs”, “Career Job Postings Online”, “Job Online”, “Jobs Emploi”, “Job Emploi” and “Job Etudiant”. When clicking in those terms, Internet users are redirected to different websites owned by Complainants’ competitors and misled to think that the content displayed on the disputed domain name originates from Complainants or is at least endorsed by them, while in fact they end up on competitors’ websites.
According to Complainants’, all the aforementioned and the fact that the trademark JOBAT has no meaning other than a distinctive trademark shows that Respondent had fully knowledge of the existence of Complainants’ business when registering the disputed domain name. Respondent would be using the disputed domain name aiming to take advantages from the reputation and goodwill of Complainants’ trademark to attract Internet users and increase its profits.
At last, Complainants note that Respondent has been involved in previous UDRP decisions, demonstrating a pattern of registering third party trademarks as domain names. In at least ten prior UDRP cases, panels ordered the disputed domain name to be transferred to the trademark owners.
Thus, Complainants sustain that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
To succeed, in a UDRP complaint, complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 burden of proving these elements is upon Complainants.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
A. Identical or Confusingly Similar
Complainants showed that they own several registrations for the trademark JOBAT and also two domain names <jobat.be> and <jobat.online> that predate Respondent’s registration of the disputed domain name.
The Panel finds that “Jobat” is a widely known platform and believes the disputed domain name <jobat.website> may cause confusion, since it incorporates Complainants’ trademark in its entirety. The TLD “.website” does not avoid a finding of confusing similarity with the trademark JOBAT, specially because the TLD is a necessary component for the registration and use of a domain name.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainants’ trademark and that the requirements of the first element of paragraph 4(a) of the Policy are satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainants have made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainants’ contentions, that burden has not been discharged, and the Panel has considered Complainants’ prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <jobat.website>.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(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 web site or location or of a product or service on your web site or location.”
The Panel finds it highly unlikely that Respondent had no knowledge of Complainants’ rights to the trademark JOBAT at the time of registration of the disputed domain name, taking into consideration that (i) the disputed domain name is being used to host a parked page containing contents related to the Complainants’ activities under the brand JOBAT; (ii) the trademark JOBAT has no dictionary meaning, the term is solely a distinctive trademark created and owned by the Complainants’ and; (iii) Complainants’ trademark JOBAT was first registered in 2005, while the disputed domain name <jobat.website> was registered by the Respondent only in 2020. Thus, on the contrary, the evidence shows that Respondent was likely deliberately trying to create confusion.
The Panel finds that the website’s content at the disputed domain name (PPC advertisements related to JOBAT niche market) confirms that Respondent registered the disputed domain name with the intention to wrongly attract Complainants’ public and pursue commercial gains with their access to the website.
In this connection, the Panel notes that the disputed domain name <jobat.website> points to a parking page with commercial links, i.e. web page in which there are several links related to recruitment and job vacancies. Considering that Complainants are offering exactly the same services under the trademark JOBAT, the Panel is the opinion that such use of the disputed domain name is evidence of bad faith use. Therefore, it is clear that Respondent, instead of making a bona fide use of the disputed domain name, rather intends to take commercial advantages and profits from the fame and goodwill of Complainants’ and their trademarks.
Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent did not present a reasonable response to the Complaint reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainants have satisfied paragraph 4(a)(iii) 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 <jobat.website> be transferred to Complainant 2, namely House of Recruitment Solutions, Besloten vennootschap.
Gabriel F. Leonardos
Date: June 6, 2020