CareerBuilder, Inc. v. John Morgan

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

CareerBuilder, Inc. v. John Morgan

Case No. D2003-0907

1. The Parties

The Complainant is CareerBuilder, Inc., a company with its principal place

of business in Reston, Virginia, United States of America (hereinafter

"the Complainant"). It is represented by the law firm Sonnenschein Nath & Rosenthal

of Chicago, Illinois, United States of America.

The Respondent is John Morgan, residing at Sanibel, Florida, United States of America

(hereinafter "the Respondent").

2. The Domain Name and Registrar

The domain name at issue in this proceeding is <carerbuilder.com>.

The Registrar is eNom.com of Bellevue, Washington, United States of America

(hereinafter "the Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

by email on November 13, 2003, and in hard copy on November 17, 2003.

On November 14, 2003, the Center transmitted by email to the Registrar

a request for registrar verification in connection with the domain name at issue.

The Registrar did not verify the Center’s request; accordingly, on November 20, 2003,

the Center independently verified, via the WHOIS database, that the disputed

domain name was registered with eNom, that the Respondent, John Morgan, was

the current registrant of the disputed domain name, and that the status of the

registration was locked. The Center subsequently checked the compliance of the

Complaint with the formal requirements of the Uniform Domain Name Dispute Resolution

Policy (the "Policy"), 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 November 20, 2003.

In accordance with the Rules, Paragraph 5(a), the due date for the Response

was December 10, 2003. The Respondent did not submit any Response.

Accordingly, the Center issued a Notification of Respondent Default on December 15, 2003.

The Center appointed D. Brian King as Sole Panelist in this matter

on December 29, 2003. The Sole Panelist 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 facts relevant to the current dispute are set out in the Complaint. Considering

the allegations therein, the evidence produced and the fact that the Respondent

has not filed a Response contesting the Complainant’s contentions, the Panel

finds the following facts to have been established.

The Complainant is a well-known online recruiting company and first registered

the CAREERBUILDER mark in the United States in 1996 (see Complainant’s

exhibit 4). The Complainant subsequently obtained registered trademarks for

CAREERBUILDER (and variations thereof) in Mexico, Canada, Australia and

the European Union (see id.).

The Complainant carries out its business on the Internet primarily through

its website "www.careerbuilder.com", which it has been using since

1996 (see Complainant’s exhibits 3 and 5). The Complainant

also owns and uses in its business the following domain names: <careerbuilder.org>,

<careerbuilderinc.com>, <careerbuilderit.com>, <careerbuilderpsa.com>,

<careerbuildermail.com>, <careerbuilderinfo.com>, <careerbuilderachieve.info>,

<careerbuildernetwork.info>, and <thecareerbuildernetwork.info>

(see Complainant’s exhibit 3).

The Respondent, who resides in the U.S., registered the disputed domain name

on October 12, 2000, i.e., long after the Complainant registered its

marks with the United States Patent and Trademark Office (see Complainant’s

exhibit 3). By that time, the Complainant had built up substantial good will

in its CAREERBUILDER mark through continuous use in Internet commerce and the

expenditure of approximately US$200 million on marketing and promotional

efforts (see Complainant’s exhibit 3, para. 12).

The disputed domain name is currently in use and automatically redirects the

user to <americansingles.com>, an online dating service.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia,

that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant argues that the disputed domain name is confusingly

similar to its registered CAREERBUILDER mark. It argues that the misspelling

of its mark (carerbuilder) does not render the disputed domain name sufficiently

distinct to avoid a likelihood of confusion.

Next, the Complainant submits that the Respondent has no rights or legitimate

interests in the disputed domain name. The Respondent is not a licensee of the

Complainant, nor has he otherwise been authorised by the Complainant to use

its mark. The Complainant further argues that the Respondent was not known by,

or doing business under, the name "CarerBuilder" prior to the registration

of the disputed domain name.

Finally, the Complainant asserts that the Respondent registered and is using

the disputed domain name in bad faith. The Complainant alleges that the Respondent

has engaged in "typo-squatting," causing Internet users seeking the

Complainant’s website to be diverted to an unrelated site for the Respondent’s

commercial gain. Furthermore, the Complainant points, as an additional indicator

of bad faith, to the Respondent’s failure to make any reply to the Complainant’s

"cease and desist" letter dated June 16, 2003 (see

Complainant’s exhibit 8).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of

the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Notwithstanding the Respondent’s default, the Complainant retains the ultimate

burden of proof on each of these elements. They will be examined in turn below.

A. Identical or Confusingly Similar

The domain name at issue is confusingly similar to the Complainant’s registered

trademark CAREERBUILDER, as well as to its earlier-registered domain name, <careerbuilder.com>.

The disputed domain name is, indeed, identical to the Complainant’s mark, but

for the omission of an "e" in the word "career." Numerous

Panels have held that where a domain name consists of a common misspelling of

a Complainant’s mark, that is sufficient to make the domain name "confusingly

similar" within the meaning of the Policy. See CareerBuilder,

LLC v. Azra Khan, WIPO Case No. D2003-0493

(August 5, 2003), at page 3; CareerBuilder, Inc. v. John Zuccarini,

WIPO Case No. D2002-0282 (May 21, 2002),

at page 4; Caesars World, Inc. v. George Godoy and Ceasars Palace Casino,

WIPO Case No. D2002-0050 (March 22, 2002),

at page 3; Geocities v. Geociites.com, WIPO

Case No. D2000-0326 (June 19, 2000), at page 3. Accordingly, the

Panel concludes, without difficulty, that the disputed domain name is confusingly

similar to the Complainant’s registered mark. The first element under Paragraph

4(a) has thus been met by the Complainant.

B. Rights or Legitimate Interests

The Panel is further satisfied that the Respondent has no rights or legitimate

interests in respect of the disputed domain name. In particular, the Panel finds

that none of the three circumstances identified in Paragraph 4(c) of the Policy

as indicative of rights or legitimate interests is present here.

First, the record does not support the conclusion that the Respondent is using

the disputed domain name in connection with a bona fide offering of goods

or services. To be sure, the Respondent is using the domain name for commercial

purposes; the domain name, when accessed, automatically redirects users to a

commercial online dating service. However, in the circumstances here, such commercial

use cannot be deemed to be bona fide. The Respondent has no permission

or license to use the Complainant’s mark, and he was on constructive notice

of the Complainant’s rights in the CAREERBUILDER mark at the time he registered

the disputed domain name. This follows from the Complainant’s registration of

CAREERBUILDER as a trademark in 1996 in the United States, the domicile

of both the Complainant and the Respondent. See 15 U.S.C. §

1072 (trademark registration constitutes constructive notice of the registrant’s

claim of ownership thereof); The Step2 Company v. Softastic.com Corp.,

WIPO Case No. D2000-0393 (June 26, 2000),

at page 4. Indeed, the Respondent almost certainly had actual knowledge of the

Complainant’s rights in the mark, given the Complainant’s extensive use of it

in Internet commerce since 1996. In these circumstances, the Respondent’s use

of the disputed domain name does not constitute bona fide commercial

use.

Second, there is no evidence to suggest that the Respondent has "been

commonly known" by the disputed domain name. The name "CarerBuilder"

(or even "CareerBuilder") has no apparent association with the Respondent,

his business, or the dating service website to which the disputed domain name

redirects Internet users.

Finally, the disputed domain name is being used for commercial purposes and

hence does not meet the "non-commercial or fair use" criterion.[1]

Accordingly, the Panel concludes that the Complainant has satisfied the second

element under Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of

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 the Respondent’s

website or location, or of a product or service on the website or location.

For purposes of the Policy, a finding of any of the four circumstances listed

in Paragraph 4(b) will be sufficient to establish registration and use

in bad faith. Those four circumstances are, furthermore, not exclusive, and

other circumstances may likewise lead, in a particular case, to a finding of

bad faith registration and use. See CCA Industries, Inc v. Bobby R.

Dailey, WIPO Case No. D2000-0148 (April 26, 2000),

at page 3.

In the present case, the Panel is satisfied that the Complainant has sufficiently

established the circumstance listed in Paragraph 4(b)(iv) of the Policy.

It has already been established above that the disputed domain name is confusingly

similar to the Complainant’s mark and that the Respondent has no rights or legitimate

interests in the domain name. Furthermore, the site is being used for commercial

gain.

The determinative question, then, is whether it can be inferred that in registering

and using the disputed domain name, the Respondent has intentionally attempted

to trade on the Complainant’s mark by creating a likelihood of confusion. The

Panel concludes that such an inference properly arises on the evidence here.

Considering that the Respondent was on at least constructive notice of the Complainant’s

rights in the name "CareerBuilder" at the time he registered the disputed

name, the lack of any apparent connection between the name and the Respondent’s

online dating business, and the fact that the disputed domain name constitutes

a common misspelling of the Complainant’s mark, a reasonable inference arises

that the Respondent registered and used the domain name in an attempt to misdirect

internet users to his own site for commercial gain. This inference is strengthened

by the Respondent’s failure to make any response to the Complainant’s "cease

and desist" letter on June 16, 2003 (see above and Complainant’s

exhibit 8).

The Panel lastly notes that the Respondent had an opportunity to explain his

legitimate interest in the use of the domain name, if any, by submitting a Response

to the Complaint. He has failed to do so, and this failure justifies the inference

that any response he could honestly have given would have been consistent with

the findings made against him above.

Based on the foregoing, the Panel concludes that bad faith registration and

use have been sufficiently established with respect to the domain name <carerbuilder.com>

in accordance with Paragraph 4(b) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the

Policy and Paragraph 15 of the Rules, the Panel orders that the disputed

domain name, <carerbuilder.com>, be transferred to the Complainant.

D. Brian King

Sole Panelist

Dated: January 13, 2004

1. As noted, the disputed domain name resolves

to a dating website, . The Terms and Conditions under the

heading "Registration & Subscription" on the website state as follows: "Although

you may register as a Member of the Service for free, if you wish to communicate

with other members and use certain other parts of the Service, you must become

a subscriber and pay the fees that are set out in our price list."

More cases by this complainant

• CareerBuilder, Inc. — D2003-0999 · Terminated
• CareerBuilder, Inc. v. Amcore & Company For sale domains $250 or best offer — D2003-0872 · careerbulder.com · Transfer · 18 Dec 2003
• CareerBuilder, Inc. — D2002-0519 · Terminated
• CareerBuilder, Inc. v. John Zuccarini — D2002-0282 · carreerbuilder.com · Transfer · 21 May 2002