Internet Employment Linkage, Inc. d/b/a HigherEdJobs v. Cbt Corp and Jarrod Kanizay
Claim Number: FA1106001395864
Complainant is Internet Employment Linkage, Inc. d/b/a HigherEdJobs (“Complainant”), represented by Elizabeth Burkhard of Holland & Knight LLP, Massachusetts, USA. Respondent is Cbt Corp and Jarrod Kanizay (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldhigheredjobs.com>, registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 28, 2011; the National Arbitration Forum received payment June 28, 2011.
On June 29, 2011, Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldhigheredjobs.com> domain name is registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. and that Respondent is the current registrant of the name. Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. verified that Respondent is bound by the Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2011, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@worldhigheredjobs.com. Also on June 30, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete July 19, 2011.
A timely Additional Submission was submitted by Complainant and found to be timely filed July 25, 2011, pursuant to the Forum’s Supplemental Rule Number 7.
On July 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant urges that Respondent registered a domain name using in its entirety Complainant’s protected mark.
2. Complainant urges that Respondent has no rights to or legitimate interests in the disputed domain name.
3. Complainant urges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
1. Respondent rejected Complainant’s claims and urges that it has a “very successful online job advertising business for the higher education sector under the domain name, worlduniversityjobs.com, along with his complimenting website, WorldHigherEdJobs.com.
2. Respondent named 21 other sites having versions of these terms along with other identifying terms.
3. Respondent urges that he acts as CBT Corp Pty Ltd and that he has held the domain name <worldhigheredjobs.com> since September 25, 2009.
4. Respondent does not address the elements of ICANN Policy but states an intent to continue to do business under the various domain name sites.
5. Respondent offered no intrinsic evidence to support its claims.
C. Additional Submissions
1. In its timely filed Additional Submission, Complainant urges that Respondent failed to address any substantive issue related to ICANN Policy.
2. Complainant urges that Respondent’s Additional Supplement also failed to show that Respondent has rights in the domain names using Complainant’s protected mark.
3. Complainant also urges that Respondent failed to counter Complainant’s allegations and proof with proof or allegations of its own.
In 2003, Complainant registered the HIGHEREDJOBS.COM mark with appropriate authorities and it became a protected mark in which Complainant has legal rights.
In 2009, Respondent registered the disputed domain name <worldhigheredjobs.com>, along with numerous others.
The Panel finds that Respondent has brought no proof to show legal and/or common law rights to use the HIGHEREDJOBS.COM mark in a domain name that Respondent seeks to use in competition with Complainant.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 to or legitimate interests relative to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant alleges that it has rights in the HIGHEREDJOBS.COM mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 2,688,003 registered February 18, 2003 and
Reg. No. 2,781,127 registered November 11, 2003.
Both registrations were approved some six years before Respondent registered the disputed domain name containing the mark.
These USPTO trademark registrations establish Complainant’s rights in the HIGHEREDJOBS.COM mark, even when Respondent lives or operates outside the U.S. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <worldhigheredjobs.com> domain name is confusingly similar to Complainant’s HIGHEREDJOBS.COM mark as the only difference is the addition of the generic term “world.” The Panel finds that adding a single generic term to Complainant’s mark fails to dispel confusing similarity under a Policy ¶ 4(a)(i) analysis. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
Respondent makes no arguments under ICANN Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name, <worldhigheredjobs.com>, is confusingly similar to a mark in which Complalnant has shown exclusive rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
After showing rights in itself, Complainant must make a prima facie showing that Respondent lacks such rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant does so, the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <worldhigheredjobs.com> domain name. To support its argument, Complainant alleges that Respondent has no authorization to use Complainant’s mark and that no evidence suggests any connection between Respondent and the disputed domain name. The WHOIS information identifies the registrant as “CBT Corp,” which is not nominally similar to Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant also contends that Respondent’s <worldhigheredjobs.com> domain name resolves to a website featuring the HIGHEREDJOBS.COM mark and displaying numerous job postings, advertisements, and related services. Complainant urges that Respondent provides these competing services under Complainant’s mark. This use by Respondent of a confusingly similar domain name does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Respondent asserts that it runs a very successful online job advertising business for the higher education sector at the domain name <worlduniversityjobs.com>. Respondent contends that the <worldhigheredjobs.com> domain name is a complimenting website for its job advertising business and that it is one of many similarly-constructed domain names in its comprehensive range of higher education sites. Respondent argues that this array of related domain names demonstrates its position in the world higher education market and includes a list of all these domain names, including <worldacademiccareers.com>, <worldhigherednews.com>, <worldhighereducationjobs.com>, <worlduniversitycareers.com>, <internationalacademic jobs.com,> and <higheredjobs.com.au>, among many others. Respondent lists 58 related domain names and argues that based on this list, Complainant’s argument that Respondent is not commonly known by the disputed domain name is inconclusive.
Respondent next sets out that just as Complainant has a company name, so too does Respondent have a company name, CBT Corp Pty Ltd,, that it uses as its group business name. Respondent asserts that the use of this company name does not indicate disengagement with its market or that it is not commonly known by the disputed domain name. Respondent affirms that it has held the <worldhigheredjobs.com> domain name since September 25, 2009, continuously using it for its business purposes and building up solid traffic over time.
Respondent asserts that it will not be altering its business stance and will continue to hold the disputed domain name, along with <worldacademicjobs.com>, <worldresearchjobs.com>, <worldhighereducationjobs.com>, and others to complete its branding using key words or well-known words and phrases readily used in the higher education sector. Given all of the above, Respondent contends that it has rights and legitimate interests in the <worldhigheredjobs.com> domain name.
The Panel disagrees. Respondent offered no extrinsic proof to support these contentions. Respondent showed no permission to use Complainant’s mark at its websites; and Respondent’s admissions reinforce Complainant’s argument that Respondent seeks to compete with Complainant using Complainant’s own mark in a domain name.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy: Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant also urges that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent uses the <worldhigheredjobs.com> domain name to engage in the same job posting and advertising activities that Complainant provides. As the Panel finds that this competitive function is carried out under Complainant’s mark at the <worldhigheredjobs.com> domain name, the Panel holds that Respondent’s activities disrupt Complainant’s business and therefore indicate bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant asserts that Respondent intentionally attempts to benefit from the use of Complainant’s mark in the <worldhigheredjobs.com> domain name by attracting consumers to a website by offering the same job search services provided by Complainant. The Panel finds that the similarity of the mark and disputed domain name and the similarity between services provided by Complainant and Respondent create a likelihood that consumers will be confused, expecting some sort of affiliation or relationship between Complainant and Respondent. Complainant argues that Respondent intentionally creates this confusion in order to commercially benefit through its own resolving website. The Panel finds that Respondent’s efforts in connection with the disputed domain name therefore indicate bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant alleges that Respondent had actual and/or constructive notice of Complainant and its rights in the HIGHEREDJOBS.COM mark prior to the registration of the disputed domain name. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds that given the list of names that Respondent registered, and the confusing similarity of the competing site, it is unlikely that Respondent would have come up with the disputed domain name without actual knowledge of Complainant’s mark. The Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent contends that the <worldhigheredjobs.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s HIGHEREDJOBS.COM mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel finds this argument to be disingenuous at best; Respondent not only aligned these terms in the same manner they are set out in Complainant’s protected mark, Respondent uses them in the same market to complete with Complainant.
The Panel finds that respondent registered and used the disputed domain name in bad faith; Complainant met the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRATED.
Accordingly, it is Ordered that the <worldhigheredjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 3, 2011.
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