Fashion Career Center, LLC v. Executive Resume Pro / Chris Barnett / Kim Little
Claim Number: FA1206001447322
Complainant is Fashion Career Center, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Executive Resume Pro / Chris Barnett / Kim Little (“Respondent”), represented by Amy Tulk of Ice Miller LLP, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <executiveresumepro.com>, <salesresumepro.com>, and <salesresumepro.net> ('the Disputed Domain Names') , registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal has been appointed as the Chair of the three-member Panel along with Sally M. Abel of Fenwick & West and Honorable Timothy O'Leary, (Ret.).
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 5, 2012.
On June 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <executiveresumepro.com>, <salesresumepro.com>, and <salesresumepro.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 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@executiveresumepro.com, postmaster@salesresumepro.com, and postmaster@salesresumepro.net. Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 on July 2, 2012.
Complainant submitted a Supplemental Submission in accordance with Rule 7 of the NAF’s Supplemental Rules on July 9, 2012.
Respondent submitted a Supplemental Submission in accordance with Rule 7 of the NAF’s Supplemental Rules on July 13, 2012.
On July 12, 2012 pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal along with Sally M. Abel of Fenwick & West and Honorable Timothy O'Leary, (Ret.).
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions in the Complaint can be summarized as follows:
In 1996, Complainant's managing member Martin Weitzman and his wife Nancy began offering professional resume drafting services online to US and British Commonwealth individuals using the trade mark RESUME PRO.
Mr. Weitzman registered <resumepro.com> on May 21, 1996. Thousands of dollars were spent building and promoting a website to which this domain resolved which became operational in May of 1996 and has continuously made use of the trade mark RESUME PRO for years. It was a commercial success and grew to employ several individuals servicing clients in the US. It has contracted with thousands of customers and grossed thousands of dollars providing resume drafting services. It is the Complainant's primary identifier used in all the Complainant's marketing activities.
Complainant filed for federal trade mark protection in the US on March 2, 2006 and RESUME PRO was registered on February 13, 2007. The mark is distinctive and has acquired secondary meaning and is not subject to extensive third party use. The Mark has become distinctive and well known since 1996.
The Disputed Domain Names <executiveresumepro.com>, <salesresumepro.com> and <salesresumepro.net> were registered by the Respondent, a competitor of the Complainant, on November 14, 1999, December 15, 2010, and October 24, 2006 respectively. The Respondent refused to take down its websites. The Disputed Domain Names were registered long after the Complainant registered its website and began using its mark. The Respondent offers identical resume drafting services on the websites attached to the Disputed Domain Names. Respondent must have known about and intended to compete with the Complainant.
Although registered under different names the Respondents are in fact a single Respondent. Kim Little controls the Disputed Domain Names which she uses for her benefit.
The Disputed Domain Names wholly encompass the mark RESUME PRO in which the Complainant has registered trade mark rights. The Disputed Domain Names all contain this mark, it being the dominant focus of the Disputed Domain Names and differ only by the addition of the generic words "executive" and "sales" which are descriptive of the market in which the Complainant and Respondent operate. The Disputed Domain Names create the same commercial impression as the Complainant's mark as they all emphasize RESUME PRO.
Respondent was not commonly known by the Disputed Domain Names prior to the rise of the Complainant's trade mark rights. Respondent has not carried on any legitimate business at the Disputed Domain Names. They were registered in bad faith and with knowledge of the Complainant's rights. Respondent has no rights or legitimate interest in the Disputed Domain Named as it has registered them in bad faith to deprive the Complainant of their use and to benefit from the sale of services similar to the Complainant's using the Complainant's mark. It is not making legitimate non-commercial or fair use of the mark. Respondent's only interest in the Disputed Domain Names is the value ascribed to them by the Complainant's RESUME PRO mark. The Complainant has not permitted the Respondent to use the mark RESUME PRO or the Disputed Domain Names.
Throughout the term of the Respondent's use of the Disputed Domain Names, Complainant's customers have been confused and mistakenly associated the Disputed Domain Names with Complainant.
Respondent registered the Disputed Domain Names for the purpose of confusing Internet users seeking the Complainant. The registration is an attempt to prevent the Complainant from reflecting its mark RESUME PRO in the Disputed Domain Names and to deprive the Complainant of business. The Respondent has registered the Disputed Domain Names to benefit financially from the sale of the Disputed Domain Names to the Complainant.
B. Respondent
The Respondent's submissions in the Response can be summarised as follows:
Kim Little is the owner of Executive Resume Pro. Chris Barnet registered <salesresumepro.com> as an agent of and on behalf of the Respondents.
Respondent Kim Little began her resume writing business in 1997. Shortly thereafter on November 14, 1999 upon discovering most of her clients were executive level she began offering her services under the name and mark EXECUTIVE RESUME PRO using <executiveresumepro.com>. The Respondent has been using the domain name <salesresumepro.com> and the corresponding mark SALES RESUME PRO since 2001. When the registration for <salesresumepro.com> accidentally expired and it was registered by another entity <salesresumepro.net> was registered on October 24, 2006 offering the same services. <salesresumepro.com> became available again and was reregistered by Chris Barnett on the Respondent's behalf.
Despite knowing of the Respondent's rights and the Complainant's US federal registration of RESUME PRO being registered eight years after the Respondent began using EXECUTIVE RESUME PRO and five years after it began using SALES RESUME PRO the Complainant nevertheless instituted this proceeding to reverse hijack the Disputed Domain Names.
At the time the Respondent began using EXECUTIVE RESUME PRO Weitzman was not actively using his alleged service mark RESUME PRO in relation to his resume writing services at the time, but was instead using the completely different mark GILBERT CAREER RESUMES LTD. The assertion that the Complainant was using the mark RESUME PRO on its website since 1996 is false and misleading. The domain name <resumepro.com> is registered by Weitzman individually, not by the Complainant company. The Complainant has not provided any evidence that Weitzman was operating the web site on behalf of the Complainant. Website archives on the Way Back Machine indicate this web site did not go live until 1998 but then only to advance GILBERT CAREER RESUMES LTD. The Complainant provides no evidence that its mark RESUME PRO was famous and well known before it was registered in 2007.
When Weitzman incorporated his business with the New Jersey Secretary of State Division of Corporations he did not register RESUME PRO in connection with his business until 2003/2004 after 2001 when the Respondent began using SALES RESUME PRO and was already using EXECUTIVE SALES PRO.
The Complainant has not provided any evidence of confusion between its business and that of the Respondents and the Respondents are not aware of any such confusion ever occurring.
Weitzman, not the Complainant, sent a single cease and desist letter in 2006, nearly seven years after the Respondent launched its <executiveresumepro.com> website and nearly five years after the Respondent began using SALES RESUME PRO AND SALESRESUMEPRO.COM. The Respondent was unaware of Weitzman's claim to the mark RESUME PRO until it received this letter. The Respondent was surprised by the letter as until then WEITZMAN had been operating under GILBERT CAREER RESUMES LTD. In the Respondent's response to the letter it said it had the rights to use its adopted name, that Weitzman could not challenge it and if the Respondent did not hear anything by May 26, 2006 it would proceed on the basis that he had reconsidered his position.
Respondent has been commonly known by the domain name <executiveresumepro.com> and EXECUTIVE RESUME PRO since at least 1999 and by the domain name <salesresumepro.com> and SALES RESUME PRO since at least 2001.
Until at least 2005 Complainant advertised his services on multiple websites including <resumepro.com> under the mark GILBERT RESUMES or GILBERT CAREER RESUMES LTD, marks and names completely different from RESUME PRO. Weitzman continues to operate under the name GILBERT RESUMES on the majority of his web sites.
Complainant has failed to show any of the circumstances under which bad faith is generally found. The allegations that the Respondent registered the Disputed Domain Names to prevent the Complainant from reflecting its mark in the domain names, for the purpose of disrupting the Complainant's business or intentionally attempting to attract users by creating a likelihood of confusion with the Complainant are simply unsupported assertions.
Complainant has been aware of the Respondent's rights and legitimate interests since at least as early as the response to its 2006 cease and desist letter. The Complainant first began using RESUME PRO as a descriptive term to generate search engine traffic. Only later in bad faith it adopted the position that RESUME PRO was its service mark in order to hijack the Respondent's fairly obtained names and do harm to its legitimate service mark rights and business interests.
C. Additional Submissions
Complainant
Additional submissions of the Complainant can be summarized as follows:
The Complainant's mark RESUME PRO is registered in the US and is not descriptive.
UDRP panels have rejected laches as a defence. Laches has never been a defence to injunctive relief under common law. It would not apply anyway as cease and desist letters have been sent and IP rights asserted.
The Complainant's RESUME PRO mark is retroactive to its first use in commerce date, which is 1996, years before the Disputed Domain Names were registered. Screenshots were provided from the Complainant's web site in 1996 and 1998.
The Respondent has known for more than five years that the Complainant sought and received trade mark protection and could have opposed the registration of the mark and/or discontinued use of the Disputed Domain Names but has done nothing.
Respondent
Additional submissions of the Respondent can be summarized as follows:
The mark RESUME PRO is registered to the Complainant, however the Complainant is attempting to establish the rights in the mark via a website clearly owned and operated by Mr. Weitzman. Complainant has provided no evidence that supports that use by Mr. Weitzman in 1996 should be attributed to Complainant in establishing its rights.
In any event there is not sufficient evidence to show that the Complainant was using the mark in connection with resume writing services before the Respondents began using EXECUTIVE RESUME PRO and SALES RESUME PRO in 1999 and 2001 respectively.
The alleged 1996 screenshot is incomplete and undated. It is exactly the same as the screenshot <resumepro.com> in late 2006 obtained from the Way Back Machine archive. The most likely reason the alleged 1996 screenshot is cut off and incomplete is that it is the 2006 website and contains a reference to 2006 further down the page. It would be ridiculous to use a design in 1996, switch to a different design and then switch back nearly ten years later to an outdated ten year old home page design. This evidence is clearly unsupported and untrue.
The Respondent believes that the alleged 2008 screenshot was altered from an actual 2004 screenshot of the web site at <resumepro.com>. It is undated. On the Way Back Machine 1998 screen shots of the web site show a different style of homepage with GILBERT CAREERS RESUMES LTD. clearly displayed at the top of the web site. The style of home page which has been submitted as 1998 does not appear on <resumepro.com> until April 6, 2004. There are some splotchy black and red marks within the red square of the logo on the alleged 1998 page likely caused by the removal of the G and C and an attempt made at restoring the solid red. The alleged 1998 screenshot is an alteration of the 2004 version of the <resumepro.com> website and was entered as false evidence by the Complainant in this proceeding. It is implausible that the Complainant would use the alleged 1998 design then go back to the Gilbert Careers Resumes Ltd. design as shown on the Way Back Machine web site and then go back to the alleged 1998 style in 2004. The 1998 screenshot is a falsified exhibit and the evidence about the 1996 and 1998 screenshots in the Supplementary Submission should be disregarded.
The Complainant's have not shown the Respondent was aware of the use of the domain name <resumepro.com> by Mr. Weitzman before the Respondent's began using the Disputed Domain Names.
Although registered under different names the Respondents are in fact a single Respondent. Kim Little controls the Disputed Domain Names which she uses for her benefit.
The Respondent has been using EXECUTIVE RESUME PRO and EXECUTIVERESUMEPRO.COM since at least 2000 and has produced a screen shot from the Way Back Machine Archive to show the same.
Who is searches show that <executiveresumepro.com> was registered on November 14, 1999, <salesresumepro.net> was registered on October 24, 2006 and <salesresumepro.com> initially was registered in 2001 and re-registered on December 15, 2010.
Until at least 2005 Mr. Weitzman advertised his services on multiple websites including <resumepro.com> under the mark GILBERT RESUMES or GILBERT CAREER RESUMES LTD. The first evidence of use by the Complainant of RESUME PRO as a trade mark in the papers submitted to the Panel is 2006. The Panelist Sally M. Abel consulted the Way Back Machine (<archive.org>) which suggests that the first evidence of use by the Complainant of RESUMEPRO as a trade mark is March 23, 2005.
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 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; and
(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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Respondent's evidence confirms that Kim Little is the person behind the business of the Respondent and the Disputed Domain Names are all registered on her behalf. As such the Panel finds that the Disputed Domain Name are, in fact, registered by the same domain name holder.
The Complainant is the owner of a US Federal registration for RESUME PRO registered in 2007. However, there is not sufficient evidence before the Panel to demonstrate that the Complainant has common law rights dating back to 1996. The research conducted by Sally M Abel one of the Panel on the Way Back Machine record appears to show that the Complainant did not use RESUME PRO as a trade mark until March 23, 2005. The Respondent submitted records from the Way Back Machine suggesting 2006. The Panel does not accept the Complainant's evidence that it used the RESUME PRO name as a trade mark before 2005/2006 and accepts the reasoning and evidence presented by the Respondent that this evidence appears to have been altered by the Complainant and does not present the true factual position.
The Disputed Domain Names all contain RESUME PRO, the Complainant's registered mark. The majority of the Panel (Osborne and O'Leary) find that the generic terms "sales" and "executive" are not sufficiently distinctive especially in the field of resume preparation services to prevent the Disputed Domain Names being confusingly similar to the Complainant's registered trade mark under the Policy (this not being a particularly difficult test to pass). See Westfield Corp. v Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the westfieldshopping.com domain name confusingly similar because the WESTFIELD mark was the dominant element).
As such the Majority of the Panel (Osborne and O'Leary) find that the Disputed Domain Names registered by the Respondent are confusingly similar to a trademark or service mark in which Complainant has rights and the first limb of the Policy is satisfied for all of the Disputed Domain Names. See AB Svenska Spel Zacharov, D2003-0527 (WIPO Oct 2, 2003) (holding that the UDRP does not require a complainant to have registered its trade mark prior to the Respondent's registration of the domain name under the Policy although this may prevent a finding of bad faith). However, the panel notes in fairness to the Respondent that there is no evidence before the Panel that customers have, in fact, been confused between the Complainant and Respondent's businesses.
However, Sally M Abel while questioning the distinctiveness of RESUME PRO for the services in question, notes that the registration does bestow a presumption of validity on the mark. However she prefers to find that as there is insufficient evidence that the Complainant established trade mark rights at any time before the trade mark registration was issued (February 13, 2007) and, therefore, at the time the Respondent obtained and began using the Disputed Domain Names (including the first registration of <salesresumepro.com>, <salesresumepro.net> as a mark or sign being used continuously by the Respondent since then), the Complainant had no relevant trade mark rights. However, while she does not agree with the reasoning and finding of the majority of the Panel with regard to this first limb of the Policy, as the Panel are in agreement with regard to the remaining limbs of the Policy, the outcome of the decision is not affected and the Panel are able to issue a unanimous outcome.
In view of the finding that the Respondent has rights and legitimate interests in respect of all the Disputed Domain Names it is not necessary for the Panel to consider the final element of the Policy. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the Panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) ("Because the Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith"). The Complainant has not satisfied its burden in demonstrating bad faith with regard to any of the Disputed Domain Names.
Reverse Domain Name Hijacking
The Complainant may not have appreciated that just registering and using <resumepro.com> as a domain name in 1996 when the actual name of its business and trade marks it was using were different would not give Rights in terms of the Policy. The Panel would not have made a finding of Reverse Domain Name Hijacking on this basis. However, there is no excuse for the apparent alteration of evidence to attempt to prove the necessary trade mark use before it actually took place. This demonstrates that the Complainant knew it would not have a successful case against the Respondent based on its later acquisition of rights in the RESUME PRO mark and that the Complainant made claims in the proceedings in bad faith. As such the Panel makes a finding of Reverse Domain Name Hijacking against the Complainant.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <executiveresumepro.com>, <salesresumepro.com>, and <salesresumepro.net> domain names REMAIN WITH Respondent.
Dawn Osborne, Sally Abel and Timothy O'Leary, Panelists
Dated: August 14, 2012
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