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CareerBuilder, LLC v. NextS Business Development [2005] GENDND 2121 (12 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CareerBuilder, LLC v. NextS Business Development

Case No. D2005-1117

1. The Parties

The Complainant is CareerBuilder, LLC, of Chicago, Illinois, United States of America, represented by Latham & Watkins, LLP, United States of America.

The Respondent is NextS Business Development, of Gauteng, South Africa. The Respondent is not represented.

2. The Domain Name and Registrar

The disputed domain name <careersbuilder.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2005. On October 25, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 25, 2005, Tucows 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 November 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2005. The Respondent did not submit any response, instead, it stated in its November 22, 2005, email communication to the Center that it was not going to file “a statement in return and will accept the proceedings as per the WIPO process”. The Center acknowledged this submission on November 23, 2005.

The Center appointed the Honourable Sir Ian Barker, QC as the sole panelist in this matter on November 29, 2005. 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

In May 1996, the Complainant adopted the CAREERBUILDER mark in connection with an on-line employment recruiting agency and related services. Since 1996, the Complainant has established the CAREERBUILDER trademark through extensive promotion, advertising and use of that mark.

The Complainant has obtained registrations for the CAREERBUILDER mark in various countries. For example:

Country	Mark	Reg. No.	Reg. Date
United States	CareerBuilder	2,082,443	7/22/1997
United States	careerbuilder.com	2,823,227	3/16/2004
European Union	CareerBuilder	001,199,363	12/11/2000
Mexico	CareerBuilder	640,961	1/31/2000
Canada	CareerBuilder	548,118	7/13/2001

The Respondent created a website using the Disputed Domain Name and the Complainant’s CAREERBUILDER trademark. The website offered on-line employment-related advice, search engines and hyperlinks in competition with the Complainant. The Respondent’s website included at least one link to the Complainant’s website (as well as links to some of the Complainant’s competitors).

The Complainant sent a ‘cease and desist’ letter to the Respondent on September 23, 2005. The letter informed the Respondent that the Complainant had existing rights in the CAREERBUILDER Mark, that the Respondent had registered a confusingly similar variation of the Complainant’s Domain Name. It enclosed a copy of the decision in CareerBuilder LLC v. Karen Vithe, WIPO Case No. D2004-0370, (August 3, 2004) (transferring a virtually identical domain name -- <careers-builder.com> -- to the Complainant.)

On October 5, 2005, the Respondent replied by email to the Complainant’s letter. The Respondent partially complied with the Complainant’s demands by removing the employment-related materials from the site, but the Respondent refused to transfer the Disputed Domain Name to the Complainant. The Respondent placed a notice on the website that the Respondent would “rebuild [their] site on another domain,” and requested “more detail” from the Complainant. The Complainant responded by email the following day and reiterated the points raised in its September 23, 2005, letter. It offered to reimburse the Respondent for the Respondent’s out-of-pocket expenses incurred to transfer the Disputed Domain Name.

On October 7, 2005, the Respondent replied to the Complainant’s email and indicated that the website was now going to be used for “third world bricklaying career builders” in South Africa and threatened to transfer the Disputed Domain Name to a third party. In its response on the same day, the Complainant advised the Respondent that it was free to create the website described, but that it could not continue to use the Complainant’s trademarks or the Disputed Domain Name. The Complainant again requested that the Respondent transfer the Disputed Domain Name and offered to reimburse the Respondent’s out-of-pocket expenses. The Respondent did not respond.

5. Parties’ Contentions

A. The Complainant

As a result of the Complainant’s extensive and continuous use of the CAREERBUILDER mark in the United States and elsewhere since May 1996, the mark has become distinctive of the Complainant’s services and is well-known in the online employee recruiting industry.

In previous WIPO UDRP cases, panelists have recognized the Complainant’s rights in the CAREERBUILDER mark. See CareerBuilder, LLC v. Names for sale, WIPO Case No. D2005-0186, paragraph 6.A (April 20, 2005) (transferring <careersbuilder.com>); CareerBuilder LLC v. Karen Vithe WIPO Case No. D2004-0370 (August 3, 2004) (transferring “careers-builder.com”); CareerBuilder, Inc v. John Zuccarini, WIPO Case No. D2002-0282, (May 21, 2002) (transferring <carreerbuilder.com>); CareerBuilder, LLC. v. Azra Khan, WIPO Case No. D2003-0493, (August 5, 2003) (transferring <careeerbuilder.com>); CareerBuilder, Inc. v. Amcore & Company For sale domains $250 or best offer, WIPO Case No. D2003-0872, (December 18, 2003) (transferring <careerbulder.com>); CareerBuilder, Inc. v. John Morgan, WIPO Case No. D2003-0907, (January 13, 2004) (transferring <carerbuilder.com>).

The Complainant’s Mark and the Disputed Domain Name differ only by the addition of an “s” in the Domain Name, and thus “can be considered as one of the so-called ‘typographical error’ cases, where the [Disputed] Domain Name is found to be confusingly similar.” See AltaVista Co. v. Kausar, WIPO Case No. D2002-0934 (November 29, 2002). Indeed, as explained by a previous panelist in a case involving a virtually identical domain name <careersbuilder.com>:

“…the only difference between the disputed domain name and the Complainant’s service mark is the letter “s”, which serves only to change the word “career” from singular to the plural. That alteration does little to change the apparent meaning of the name for prospective Internet users. Obviously, a user would expect to find multiple employment opportunities under either title and would likely think she was dealing with the same company. Alternatively, the user could simply intend to enter the Complainant’s website, <careerbuilder.com>, identical to the Complainant’s mark, and enter the Respondent’s website by the simple keystroke error of entering an additional “s” to the name.”CareerBuilder, LLC v. Names for sale, WIPO Case No. D2005-0186, (April 20, 2005).

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the CAREERBUILDER Mark in a domain name or in any other manner.

The Respondent’s registration and use of the CAREERBUILDER Mark must be intended for commercial gain because the Respondent has misleadingly diverted consumers to competitive job search engines and content. Such use also tarnishes the Complainant’s Mark. The Respondent cannot claim to be making a legitimate non-commercial or fair use of the Complainant’s Mark.

The Respondent knew of and sought to capitalize from the fame and value of the Complainant’s mark, and its high-traffic location domain name, <careerbuilder.com>, when it registered the Disputed Domain Name.

Even if the Respondent denies knowledge of the CAREERBUILDER Mark, the Respondent is deemed to have constructive notice of CareerBuilder’s trademark rights in the CAREERBUILDER Mark by virtue of CareerBuilder’s federal trademark registrations. See Microsoft Corp. v Tumakov, WIPO Case No. D2002-1039, (December 19, 2002).

The only consumers likely to enter the Disputed Domain Name are those who inadvertently make the typographical error of adding an “s” while trying to enter the Complainant’s domain name. Such misspelling is designed to take advantage of Internet users who either mistype or do not know the correct spelling of the Complainant’s Mark and to create confusion between the Complainant’s Mark and the affiliation or endorsement of the products, services and content affiliated with the Disputed Domain Name. “Such conduct alone creates a prima facie inference of bad faith.” See Microsoft Corp. v. Charlie Brown, WIPO Case No. D2001-0362 (August 16, 2001).

Prior to the Complainant’s “cease and desist” letter, the Disputed Domain Name resolved to a directory of on-line employment-related advice, search engines and websites and contained multiple occurrences of the CAREERBUILDER trademark. Following receipt of the Complainant’s “cease and desist” letter, the Respondent removed the content of the website, however, as noted by a previous Panelist:

“[t]o argue that Complainant should have to wait for some future use of the disputed domain name[] to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.”

Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615 (October 18, 2004).

Based on the foregoing, it is apparent that the sole purpose of the Respondent’s registration and use of the Disputed Domain Name is to capture the Complainant’s actual or potential customers and divert them to unauthorized third party websites that are not sponsored or endorsed by or affiliated with the Complainant. Diverting Internet users to such third party websites for commercial gain constitutes bad faith use of a domain name. The Coryn Group, Inc. and Apple Vacations East, Inc. v. Azra Khan, WIPO Case No. D2003-0655 (October 17, 2003).

The Respondent’s refusal to relinquish the Disputed Domain Name after receiving notice of the infringement upon the Complainant’s mark demonstrates that the Respondent has no intention of respecting or recognizing the Complainant’s mark or its rights. This course of conduct shows that the Respondent is operating the Disputed Domain Name in bad faith. See Microsoft Corp. v. Tumakov, WIPO Case No. D2002-1039, (December 19, 2002).

B. The Respondent

The Respondent has made no submissions.

6. Discussion and Findings

The Panel agrees with the Complainant’s submissions which derive support from the decisions given in the several prior cases taken by the Complainant under the Policy to protect its mark.

A. Identical or Confusingly Similar

The disputed domain name is clearly confusingly similar to the Complainant’s registered mark. As noted in the submissions, the addition of an “s” in the domain name makes this one of the ‘typographic error’ cases.

B. Legitimate Rights and Interests

The Complainant has granted the Respondent no rights or interests in its mark. The Respondent has not alleged any. Under the Policy, the Respondent could have alleged matters which might have overcome the inference that it had no rights or interests. It has not done so. The Panel finds, based on the case file, that the Respondent does not have rights or legitimate interests in the Disputed Domain Name in accordance with Paragraph 4(c) of the Policy.

C. Bad Faith Registration

Although it should not necessarily be assumed that the existence of a United States trademark would be known by a Respondent resident in South Africa, the Panel can easily infer bad faith by this Respondent as at the date of registration of the disputed domain name. The Respondent’s website included at least one link to the Complainant’s website and links to some of its competitors. Therefore, it seems clear that the Respondent had prior knowledge of the Complainant’s trademark when the Respondent registered the Disputed Domain Name. The Respondent’s conduct after receiving the “cease and desist” letter is also indicative of continuing bad faith. Indeed, the Respondent seems ready for the inevitable. From a reading of its email to the Center, it appears to abide by the Panel’s decision.

Accordingly, the Panel has no hesitation in finding all three criteria proved by the Complainant.

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 <careersbuilder.net> be transferred to the Complainant.

Hon Sir Ian Barker QC
Sole Panelist

Date: December 12, 2005