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Society for Human Resource Management v. Local Services ICN [2004] GENDND 503 (7 April 2004)

1. The Parties

The Complainant is Society for Human Resource Management, Alexandria, Virginia, of United States of America, represented by Reed Smith LLP, United States of America.

The Respondent is Local Services ICN, Sheung Wan, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <hrmagazine.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2004, by e-mail and on February 23, 2004, by hard copy. On February 19, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On February 20 and 23, 2004, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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 February 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2004. The Respondent did not submit a response. Accordingly, the Center notified the Respondent's default on March 16, 2004.

The Center appointed Joan Clark as the sole panelist in this matter on March 24, 2004. 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 evidence reveals that the Complainant is the owner of three trade-mark registrations in the United States: the word mark HRMAGAZINE first used on October 10, 1989, and registered April 30, 1991; the mark HR MAGAZINE and design, first used in November 1998, and registered July 4, 2000; and HR MAGAZINE and design, first used in November 1998, and registered August 22, 2000. In the last two registrations, which are for HR MAGAZINE and design, no claim is made to the exclusive right to use "magazine" apart from the mark as shown. All three marks are registered in association with magazines concerning human resource management or, in the case of the last two mentioned marks, the human resource management industry.

All three marks are registered in the name of the Complainant.

The Respondent's domain name <hrmagazine.com> was recorded on September 30, 2000.

5. Parties' Contentions

A. Complainant

The Complainant is described in the Complaint as the world's largest association devoted to human resource management. The Complaint also avers that the Complainant represents more than 175,000 individual members and that its mission is to serve the needs of human resource professionals by providing the most essential and comprehensive resources available. The Complainant was founded in 1948, and has more than 500 affiliated chapters within the United States and members in more than 100 countries.

The Complainant asserts that Respondent's domain name is identical and/or confusingly similar to Complainant's trade-marks listed above, also that the Complainant and its "HR MAGAZINE" are internationally known, and further that Complainant has invested millions of dollars publicizing and using its trade-marks to ensure its automatic identification with excellence in the human resources management profession.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name and, in support thereof, states that the Complainant never granted Respondent any rights to use the HR MAGAZINE trade-mark, that Respondent is not known as "hr magazine" and is not making a legitimate, non-commercial or fair use of this name. Instead, the Complainant asserts that the Respondent uses the domain name to attract Internet users to a commercial website which consists entirely of a number of links to other commercial sites.

According to the Complainant, once at these linked sites, the user is subject to various "pop-up" ads, which the user must click on a series of windows containing these ads before exiting the browser. The Complainant further asserts that the Respondent is using the domain name solely for its own commercial gain, violating paragraph 4(c)(iii) of the Policy. In addition, the Complainant states that the services offered by the Respondent are not bona fide, but merely such to direct users to other websites.

The Complaint also alleges that the Respondent's practice of using the domain name for the purpose of diverting users to an unrelated internet site is classic bad faith and that the Respondent has used the name intentionally to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant's mark.

The Complainant also asserts that the Respondent had constructive notice that the domain name it registered was identical to and/or confusingly similar to the Complainant's trade-mark.

The Complainant has requested that the Administrative Panel render a decision that the domain name in dispute be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that in order to be successful, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to Complainant's trademark or service mark; and

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent's rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel finds that the domain name in dispute is virtually identical and certainly confusingly similar to Complainant's registered trade-mark HRMAGAZINE which was registered on April 30, 1991, the only differences being that, in the registered trade-mark, the letters are in upper case whereas in the domain name they are in lower case and the domain name has, in addition, the suffix ".com". It has been held in many decisions that the appearance of the suffix denoting a top-level domain name should not be taken into consideration in considering whether the domain name be identical or confusingly similar to a trade-mark.

The domain name in dispute is also confusingly similar to the other two registered trade-marks of the Complainant, the additional distinctions being that, in those two trade-marks, there is a slight space between HR and MAGAZINE, which is almost irrelevant with respect to the issue of confusion, and secondly, there is a disclaimer to the Complainant's exclusive right to use MAGAZINE apart from the mark as shown.

The Panel has no hesitation in concluding that the domain name in dispute is virtually identical to the first of Complainant's trade-marks, and is confusingly similar to all three marks in which Complainant has demonstrated it has rights by virtue of registration.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint and there is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name in dispute. It is noted that this domain name was recorded on September 30, 2000, more than nine years after the earliest registration that appears in the record for Complainant's trade mark HRMAGAZINE.

By virtue of the Complainant's large membership and the extensive advertising of its trade mark, it is probable that the Respondent was aware of the Complainant's trade mark before it adopted the domain name at issue. The initials HR preceding MAGAZINE do not seem to have any relation to the various links on Respondent's website as appears from the material in the record produced by the Complainant and there is no logical explanation for Respondent's having adopted the domain name at issue other than to attract viewers familiar with the Complainant's trade marks.

Whatever use Respondent has made of the domain name in dispute has not been in connection with the bona fide offering of goods or services under that domain name, but rather has been a way of attracting users to its website and directing them to other websites advertising different products and services.

There is no evidence that the Respondent has been commonly known by the domain name in dispute, and there is no indication that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers. In fact, the contrary appears to be the case: by adopting a domain name which is confusingly similar to Complainant's trade marks, the Respondent has attempted to misleadingly divert customers away from Complainant.

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Respondent has adopted a domain name which is virtually identical to one of Complainant's trade-marks and certainly confusingly similar to all three of its marks, which the Complainant has invested millions of dollars publicizing and using to ensure automatic identification with excellence in the human resources management profession, according to the Complaint. There is no indication, in the material produced, namely a printout from a page of the Respondent's website, to indicate any reason for adopting the letters HR in the domain name in dispute other than to attract viewers familiar with Complainant's trade-marks.

The Panel finds that, by using the domain name at issue, the Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with the Complainant's marks and to divert such users to unrelated internet sites offering various business opportunities. As held in the case of Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654, "Respondent's use of these" (confusingly similar) "domain names to direct users to unrelated advertisements is classic bad faith". The Panel concludes that this was intended to be for commercial gain, in view of the information on the printed page aforesaid which indicates the numerous business opportunities available for the users from which one may conclude that the businesses referred to would provide some recompense to the domain name holder in return for the advertisement of such businesses and the publishing of links thereto.

The Panel has concluded that the domain name in dispute was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hrmagazine.com> be transferred to the Complainant.