DECISION

Williams Media Group v. Radoslav Bogdanov

Claim Number: FA0210000128696

PARTIES

Complainant is Williams Media Group, Lisbon, IA (“Complainant”) represented by Paul D. Burns, of Bradley & Riley PC.  Respondent is Radoslav Bogdanov, Chicago, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <1800cdljobs.com>, registered with VeriSign.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2002; the Forum received a hard copy of the Complaint on October 28, 2002.

On October 25, 2002, VeriSign confirmed by e-mail to the Forum that the domain name <1800cdljobs.com> is registered with VeriSign and that Respondent is the current registrant of the name. VeriSign has verified that Respondent is bound by the VeriSign registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@1800cdljobs.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <1800cdljobs.com> domain name is identical to Complainant’s proprietary telephone number and common law trademark 1800CDLJOBS.

Respondent does not have any rights or legitimate interests in the <1800cdljobs.com> domain name.

Respondent registered and used the <1800cdljobs.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Williams Media Group, established its business of recruiting truck drivers in March of 1999. Complainant uses the trade name “CDLJobsonline.” Operating out of Iowa, Complainant’s business connects holders of commercial drivers licenses (“CDL”) with trucking firms. Pursuant to this business, Complainant registered the <cdljobsonline.com> and <cdljobs.com> domain names, and has spent significant resources developing these websites. In conjunction with its presence on the Internet, Complainant obtained the telephone number 1-800-CDLJOBS, devloping common law trademark rights to the mark through its efforts to create recognition by the public that the phone number is a means of accessing Complainant’s services.

Respondent, Radoslav Bogdanov, registered the <1800cdljobs.com> domain name September 15, 2000. Respondent is not a licensee of Complainant, and has not posted any content on its website since its registration of the disputed domain name over two years ago, other than to post an “Under Construction” website. On September 11, 2001 Complainant received an e-mail through Afternic.com’s Virtual Broker service informing it that the holder of the disputed domain name had set the asking price for its domain name registration as $78,000.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Respondent’s <1800cdljobs.com> is identical to Complainant’s common law trademark and proprietary telephone number 1800CDLJOBS. The only difference between the disputed domain name and the mark in which Complainant has established rights is the addition of a “.com,”, which is inconsequential for purposes of conducting a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Under Policy ¶ 4(a)(i) Complainant must demonstrate that the disputed domain name is identical to a mark in which Complainant has rights. This phrase does not mean that Complainant must prove that it has registered its mark with a governmental authority; the threshold requirement for bringing a Complaint under the UDRP is more expansive:

The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).

                 

Common law trademarks have been held by previous panels to represent sufficient “rights” to have standing under the UDRP. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant avers that it has a common law trademark in the mark 1800CDLJOBS. In light of Complainant’s assertion of such a mark, which has gone uncontested by Respondent, the Panel does not feel it necessary to determine whether Complainant’s ownership of an alphanumeric toll-free number provides sufficient rights to have standing in the present dispute. The Complaint adequately supports Complainant’s contention that it has common law trademark rights in the 1800CDLJOBS mark, and the disputed domain name is identical to that mark.

Complainant has met its burden and Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

In determining whether Respondent has rights or legitimate interests in a domain name, the Panel will consider Respondent’s lack of a Response as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent has not developed a website associated with the disputed domain name since it registered the <1800cdljobs.com> domain name over two years ago. This lack of activity does not evidence a bona fide offering of goods and services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii), both being ways of affirmatively expressing rights or legitimate interests in a disputed domain name. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Respondent’s contact information indicates that it is known as “Radoslav Bogdanov” and no evidence indicates that Respondent is or has ever been “commonly known by” the name 1800CDLJOBS or <1800cdljobs.com>. Taking into account Respondent’s failure to rebut Complainant’s allegations, the Panel finds that Complainant has adequately shown that Respondent has not been “commonly known by” the disputed domain name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

By successfully demonstrating that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i)-(iii), Complainant shifts the burden of proof to Respondent to produce evidence rebutting these assertions. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist). As Respondent submitted no Response to the Complaint, it fails to meet this burden.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <1800cdljobs.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Policy lists four circumstances indicating that a domain name was registered and used in bad faith. However, this list is meant to be merely illustrative of examples of bad faith use and registration, and should not be viewed as exhaustive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

While not specifically noted in the Policy, passive holding of a domain name has been held to be evidence of bad faith use and registration of a domain name under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith). As Respondent has passively held the <1800cdljobs.com> domain name for over two years, the Panel concludes that Respondent registered and used the the disputed domain name in bad faith.

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <1800cdljobs.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: December 19, 2002

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