Internet Employment Linkage, Inc. and Inside Higher
Ed, Inc. v. Robert Kuhne a/k/a Domain Names Holdings Ltd.
Claim Number: FA0706001011316
PARTIES
Complainants are Internet
Employment Linkage, Inc. and Inside Higher Ed, Inc. (collectively,
“Complainant”), represented by David A.W. Wong, of Barnes & Thornburg
LLP, 11 South Meridian Street, Indianapolis, IN 46204. Respondent is Robert Kuhne a/k/a Domain
Names Holdings Ltd (“Respondent”),
REGISTRARS AND DISPUTED DOMAIN
NAMES
The domain names at issue are <insidehigheredjob.com>, <insidehigheredjobs.com>, and <insidehigheredjobs.info>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com,
and <higheredjob.org>,
registered with Schlund + Partner AG.
PANEL
The undersigned certifies that he has acted independently and impartially
and to the best of his knowledge has no known conflict in serving as Panelist
in this proceeding.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 18, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 19, 2007.
On June 19, 2007, Schlund + Partner AG
confirmed by e-mail to the National Arbitration Forum that the <higheredjob.org>
domain name is registered with Schlund
+ Partner AG and that Respondent is the current registrant of the
name. Schlund
+ Partner AG has verified that Respondent is bound by the Schlund + Partner AG 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 June 20, 2007, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed
by e-mail to the National Arbitration Forum that the <insidehigheredjob.com>, <insidehigheredjobs.com>,
and <insidehigheredjobs.info>
domain names are registered with Computer
Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the
current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.com has
verified that Respondent is bound by the Computer
Services Langenbach Gmbh d/b/a Joker.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On June 21, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 11, 2007 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@insidehigheredjob.com, postmaster@insidehigheredjobs.com,
postmaster@higheredjob.org and postmaster@insidehigheredjobs.info by
e-mail.
A hard copy of the Response was received on July 11, 2007. However, the National Arbitration Forum did
not receive the Response in electronic copy until after the deadline for
Response. Therefore, the National
Arbitration Forum has deemed the Response deficient pursuant to Supplemental
Rule 5(b).
Complainant filed a timely Additional Submission on July 17, 2007. Respondent filed a timely Additional Submission
on July 23, 2007.
On July 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain names <insidehigheredjob.com>, <insidehigheredjobs.com>,
<higheredjob.org> and <insidehigheredjobs.info> are
confusingly similar to Complainant’s service marks HIGHEREDJOBS.COM and INSIDE
HIGHER ED, and the <higheredjobs.com> and <insidehighered.com> domain names, Complainant’s domain
names.
Complainant alleges Respondent has no rights or
legitimate interests in the disputed domain names but merely uses them to
divert Internet users to his website which offers services that compete with
those of Complainant.
Complainant also contends Respondent’s use of the domain names is in bad faith because he is attempting to deceive Internet users by creating a false impression of an affiliation with Complainant in furtherance of his competing business.
B. Respondent
Respondent seeks dismissal of the Complaint on the ground that the
Complaint is comprised of two entities who do not have a sufficient nexus with
each other to maintain the Complaint as entities that have a common right to
the domain names asserted in the Complaint.
Alternatively, Respondent denies the merits of Complainant’s contentions. Respondent asserts that the domain names are made up of common terms that are not protected by Complainant’s trademark registrations. Respondent also asserts that he has been using the common terms since 1999, several years prior to Complainant’s registrations. Respondent contends he uses the disputed domain names in a bona fide offering of goods and services and denies he registered the domain names in bad faith.
C. Additional Submissions
Complainant in its Additional Submission defends its rights to make the
claim on behalf of both entities and accuses Respondent of ignoring the fact
that the common terms in the trademarks are accompanied by distinctive terms
which together give the marks protected status.
Complainant also cites to its use of its marks in 1994, 1996, and 2004
and alleges that Respondent’s use of metatags does not establish trademark
rights.
Respondent in his Additional Submission accuses Complainant of
erroneous statements and alleges Complainant has not demonstrated a sufficient
link between the entities. Respondent
realleges its previous contentions regarding Complainant’s effort to seek
protection for merely descriptive and generic terms.
FINDINGS
The two entities that comprise Complainant
are Internet Employment Linkage, Inc. (“IEL”) and Inside Higher Ed, Inc.
(“IHE”). The nexus between them is a
consent agreement they entered in which they show they have agreed between
themselves regarding their respective rights in their trademarks HIGHEREDJOBS.COM and INSIDE HIGHER ED.
IEL owns and operates the <higheredjobs.com> domain name and associated website. It offers personnel placement and recruitment services on its website. IHE owns and operates the <insidehighered.com> domain name and associated website. It provides news, opinions and information concerning higher education on its website, including job postings. IEL owns the trademark registration for HIGHEREDJOBS.COM and has been using that mark since 1996. IHE owns the registration for INSIDE HIGHER ED and has been using that mark since 2004.
Respondent registered its disputed domain names in 2006 and 2007. Those domain names resolve to a website which displays the mark ACO ACADEMIC CAREERS ONLINE. Respondent is not commonly known by Inside Higher Ed Job, Inside Higher Ed Jobs or Higher Ed Job. Respondent has no trademark or service mark registration incorporating those terms. Respondent offers services that compete with those of IEL and IHE.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that 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;
(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.
There are two preliminary issues. One issue concerns Respondent’s deficient response pursuant to ICANN Rule 5 and Forum Supplemental Rule 5, due to the late filing of the electronic copy. The Panel finds that the hard copy of the response was timely filed and does not believe the late filing of the electronic copy has caused prejudice. The Panel therefore will consider the response. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007).
The second preliminary issue
concerns the two entities as one Complainant.
Under UDRP Rule 3(a), a single person or entity “or multiple persons or
entities who have a sufficient nexus who can each claim to have rights to all
domain names listed in the Complaint” may initiate a filing. The redacted agreement furnished by IEL and
IHE demonstrates that the two entities have reached an understanding regarding
their mutual and respective rights in the disputed domain names and that those
rights are intertwined. Under the
principles discussed in Vancouver Organizing Committee for the 2010
Olympic and Paralymic Games and International Olympic Committee v. Hardeep
Malik, FA 666119 (Nat. Arb.
Forum May 12, 2006), the panel finds this is a sufficient nexus and thus a
sufficient reason to permit the two entities to bring the complaint as one
entity. It is difficult to see how
Respondent suffers any prejudice by the joinder of the two entities in a single
complaint. Prejudice is not shown by
mere assertions of unfairness.
Respondent’s objection is without merit.
Complainant has established its rights in its
marks through registration with the United States Patent and Trademark
Office. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006). Even though the marks
contain generic terms, the overall marks are protectible for purposes of
determining Complainant’s rights under Policy ¶ 4(a)(i). See David Hall Rare Coins v.
The disputed domain names <insidehigheredjob.com>, <insidehigheredjobs.com>, <higheredjob.org>,
and <insidehigheredjobs.info> are clearly confusingly similar to Complainant’s marks. The alterations by Respondent do not
sufficiently distinguish the disputed domain names from Complainant’s marks
within the meaning of Policy ¶ 4(a)(i). See Experian
Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007).
Respondent is not commonly known by the
disputed domain names. He does business
under the ACO ACADEMIC CAREERS ONLINE mark and is using the domain names to
redirect Internet users to his website, which offers services that compete with
Complainant’s services. Respondent does
not have rights or legitimate interests in the domain names within the meaning
of Policy ¶ 4(a)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003).
Complainant has shown that Respondent registered the disputed domain names primarily to divert Internet users seeking Complainant’s business to Respondent’s website to promote its competing services. The record shows the parties compete in the same market. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 23, 2006).
In sum, the Panel
finds Respondent is taking advantage of the confusing similarity between the
disputed domain names and Complainant’s marks to profit from the goodwill
associated with Complainant’s marks.
This conduct violates Policy ¶ 4(a)(iii). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insidehigheredjob.com>, <insidehigheredjobs.com>,
<higheredjob.org>, and <insidehigheredjobs.info>
domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: July
31, 2007
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