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CareerBuilder, LLC v. Stephen Baker [2005] GENDND 408 (6 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CareerBuilder, LLC v. Stephen Baker

Case No. D2005-0251

1. The Parties

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

The Respondent is Stephen Baker, Sandy, Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <job-careerbuilder.com> is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2005. On March 9, 2005, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name at issue. On March 10, 2005, Primus Telecommunications t/a PlanetDomain & PrimusDomain 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 proceeding began on March 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2005.

The Center appointed Dennis A. Foster as the sole panelist in this matter on April 27, 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

CareerBuilder, LLC, the Complainant, is a job search and job consultations enterprise that began operating on the Internet in 1996. It registered the service mark CAREERBUILDER on July 22, 1997, in the United States of America in international class 42 for providing access to an interactive computer database via an on-line network in the field of employment availability. The Complainant has also exhibited subsequent CAREERBUILDER trademark registrations in the European Union, Mexico and Canada (Complaint Annex 5). On February 28, 2005, the Complainant sent a cease and desist letter to the Respondent informing him of the Complainant’s trademark rights in the disputed domain name (Complaint Annex 9).

The Respondent registered the disputed domain name on February 7, 2005. The Respondent apparently uses the disputed domain name to mimic the Complainant, and to attempt to solicit personal data - including credit card information - from visitors to the website, a practice known as “phishing”.

5. Parties’ Contentions

A. Complainant

Complainant has established substantial goodwill in the CAREERBUILDER trademark through extensive promotion, advertising and use of the mark.

Complainant has obtained registrations for the CAREERBUILDER mark throughout the world (Complaint Annex 5).

In previous WIPO UDRP cases involving the Complainant, several panelists have recognized its rights in the CAREERBUILDER mark. (CareerBuilder LLC v. Karen Vithe, WIPO Case No. D2004-0370 (August 3, 2004); CareerBuilder, Inc. v. John Morgan, Case No. D2003-0907 (January 13, 2004)).

Respondent has registered the disputed domain name, which wholly incorporates Complainant’s CAREERBUILDER mark preceded by a hyphen and the descriptive word “job”. Prior UDRP panels have found that the use of a complainant’s entire trademark with non-distinctive and descriptive matter is sufficient to establish a domain name is identical or confusingly similar to that complainant’s registered mark. Dr. Ing. h.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. 2003-0888 (January 6, 2004).

Complainant’s mark and the disputed domain name are essentially identical, visually, phonetically, and in connotation and commercial impression. Such visual, phonetic, and connotative identity supports a finding of confusing similarity. Microsoft Corp. v. Charlie Brown, WIPO Case No. D2001-0362 (August 16, 2001).

The Complainant has clear trademark priority, having begun first use of the CAREERBUILDER mark in 1996, and by virtue of its ownership of its trademark registrations and applications that predate Respondent’s initial registration of the disputed domain name on February 7, 2005.

Respondent has no connection or affiliation with 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. Complainant does not sponsor or endorse the Respondent’s use of the CAREERBUILDER mark in connection with the disputed domain name.

Respondent expressly denies any rights or interest in the disputed domain name. (Declaration of Respondent in Complaint Annexes 6 and 7).

Respondent knew of and sought to capitalize on the fame and value of the CAREERBUILDER mark and the high traffic location <careerbuilder.com> when it registered the disputed domain name. Even if the Respondent denies knowledge of the CAREERBUILDER mark, he is deemed to have had constructive notice of the Complainant’s trademark rights in the CAREERBUILDER mark by virtue of the Complainant’s federal trademark registrations. Microsoft Corp. v. Tumakov, WIPO Case No. D2002-1039 (December 19, 2002).

Respondent’s knowledge of Complainant’s rights is also borne out by the manner in which Respondent is using the disputed domain name. The disputed domain name is being used as part of a phishing attack (i.e., using ‘spoofed’ e-mails and a fraudulent website designed to fool recipients into divulging personal financial data such as credit card numbers, account usernames and passwords, social security numbers, etc.)

When entered into a web browser, the disputed domain name resolves to a mirror of Complainant’s <careerbuilder.com> website (Complaint Annexes 4 and 8). However, when entered through the link provided in the “phish” e-mail obtained by Complainant, the disputed domain name resolves to a page controlled by Respondent that requests credit card information (Complaint Annex 8).

Complainant directly notified Respondent of its rights on February 28, 2005, when it sent a cease and desist letter to Respondent via overnight courier and electronic mail (Complaint Annex 9). The letter informed Respondent that Complainant had existing rights in the CAREERBUILDER mark, and that Respondent had registered a confusingly similar variation of the Complainant’s domain name and was using it for fraudulent purposes. Complainant demanded that Respondent immediately cease use and/or development of the disputed domain name and that Respondent assign all right, title and interest in the disputed domain name to Complainant.

It is apparent that the sole purpose of Respondent’s registration and use of the disputed domain name is to capture Complainant’s actual or potential customers and divert them to unauthorized third party web sites 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).

A WIPO panel found bad faith in very similar circumstances. In the case of CareerBuilder, Inc. v. Amcore & Company For sale domains $250 or best offer, WIPO Case No. D2003-0872, (December 18, 2003), the panel held that a respondent who had registered a misspelling of the CAREERBUILDER mark had acted in bad faith.

Respondents’ deliberate effort to conceal its true identity through the inclusion of false information regarding the alleged owner of the disputed domain name further demonstrates bad faith. Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (September 22, 2004) citing Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

B. Respondent

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

6. Discussion and Findings

Paragraphs 4(a)(i-iii) of the Policy sets forth three items that the Complainant must prove in order to obtain the transfer of the disputed domain name it seeks in this proceeding. These are:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant has exhibited a copy of its CAREERBUILDER trademark registration in the United States of America: No. 2,082,443 dated July 22, 1997, in international class 42 for a job search database. The Complainant subsequently registered this trademark in the European Union, Mexico and Canada (Complaint Annex 5). The disputed domain name, <job-careerbuilder.com>, has added the word “job” and a hyphen. When combined with the trademark CAREERBUILDER, the word “job” is a logical, descriptive add-on. This type of add-on does not create a new, distinctive name (see Dr. Ing. h.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. 2003-0888 (January 6, 2004)). Furthermore, punctuation changes such as hyphens are de minimis when analyzing a domain name for identity or confusing similarity under the Policy (see Owens Corning Fiberglass Technology, Inc. v. Hammerstone, WIPO Case No. D2003-0903 (December 29, 2003) involving a hyphen in the domain name <cultured-stone.com>). Thus, the Panel finds that the disputed domain name, <job-careerbuilder.com>, is confusingly similar to the Complainant’s CAREERBUILDER trademark, and that the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent is not licensed or otherwise authorized to use the disputed domain name. It is now well-established under the Policy that this constitutes prima facie proof for the Complainant under paragraph 4(a)(ii) of the Policy, for the Complainant can not be required to prove a negative (see H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO Case No. D2004-0174 (June 7, 2004); and Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252 (July 5, 2000)). Rather, in the face of the Complainant’s prima facie case, it is incumbent on the Respondent to show that it does have rights or legitimate interests in the disputed domain name as provided in paragraphs 4(c)(i-iii) of the Policy. In the case at hand, the Respondent is in default and thus has chosen not to attempt to show rights or legitimate interests in the disputed domain name. The Panel therefore finds the Complainant has discharged its burden to show that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has advanced several grounds that it contends support a finding of bad faith registration and use on the part of the Respondent. The most important of these is that the Respondent is using the disputed domain name to solicit credit card information from persons seeking the Complainant’s services: “phishing”. The Respondent accomplishes this by imitating the Complainant’s website at <careerbuilder.com> and sending e-mails that appear to be from the Complainant, “spoofing” (Complaint Annex 8). The Panel agrees with the Complainant that the Respondent’s motive must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(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”. (see The Coryn Group, Inc. and Apple Vacations East, Inc. v. Azra Khan, WIPO Case No. D2003-0655 (October 17, 2003)). The Respondent’s actions may also well be a crime in the United States of America, but the Panel believes any possible criminal aspect of the Respondent’s conduct lies beyond the bounds of the UDRP. (For example, the panel in Halifax plc v. Sontaja Sanduci, WIPO Case No. D2004-0237 (June 3, 2004) found that phishing was “not just evidence of bad faith but possibly suggestive of criminal activity.”)

At one point, the Respondent or an impersonator contacted the Complainant claiming that the disputed domain name was registered in his name unbeknownst to him (Complaint Annex 7). Regardless of whether this person was an unknowing third party or actually the Respondent attempting to distract us with a red herring, the Panel finds there is a deliberate attempt to use false contact information, which has at times been found to be grounds for bad faith use and registration under the Policy. The Panel finds the evidence on false contact information is additional grounds for bad faith registration and use in this case. (see Forte Communications, Inc. v. Service Life, WIPO Case No. D2004-0613 (September 22, 2004); and Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). While this is not one of the enumerated grounds for bad faith under the Policy in paragraphs 4(b)(i-iv), paragraph 15(a) of the Rules gives the Panel the authority to find additional bad faith grounds where appropriate.

Based on this discussion, the Panel finds the Complainant has discharged its burden of proof under paragraph 4(a)(iii) of the Policy to show that the Respondent has registered and is using the disputed domain name 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, <job-careerbuilder.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: May 6, 2005