CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR
Claim Number: FA1505001619758
Complainant is CW & Associates Consulting and Recruiting Inc. (“Complainant”), represented by Allison Thornton of Koch Thornton LLP, Canada. Respondent is Lynda Pitchford / ITSR (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etsalesrecruiters.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <etsalesrecruiters.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2015 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@etsalesrecruiters.com. Also on May 21, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the ETSRECRUITERS mark under the common law which date back to the mark’s first use on May 30, 2013, with the registration of the <etsrecruiters.com> domain name. Complainant has established a secondary meaning of the ETSRECRUITERS mark via its use in commerce and media. Respondent’s <etsalesrecruiters.com> domain name is confusingly similar to the ETSRECRUITERS mark as the mark is fully incorporated and is altered by the incorporation of the term “sales”, which forms a part of Complainant’s business name “Elite Technology Sales Recruiters” and is therefore descriptive of Complainant and its offerings as a business entity. Also, the disputed domain name adds the generic top-level domain (“gTLD”) “.com” as a suffix.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <etsalesrecruiters.com> domain name. Further, no bona fide offering of goods or services, or any legitimate noncommercial or fair use is evidenced by Respondent’s use of the disputed domain name as it contains no content and merely redirects to Respondent’s home site located at the <itsalesrecruiters.ca> domain name, which directly competes with Complainant.
While the disputed domain name was placed on a LinkedIn profile of Complainant’s without Complainant’s knowledge by an unspecified third party, it can be inferred that Respondent had a stake in such placement and as such, bad faith disruption follows under Policy ¶ 4(b)(iii). Also, as Complainant and Respondent are competitors who previously engaged in business practices together, following a hostile end to their business engagement, Respondent registered an infringing domain name to profit from the goodwill associated with Complainant’s business per Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is CW & Associates Consulting and Recruiting Inc. et al. of Ontario, Canada. Complainant claims Canadian and USA common law trademark rights in the marks ETSRECRUITERS.COM, ETS RECRUITERS, and ELITE TECHNOLOGY SALES RECRUITERS; collectively the ETS marks. The marks puportedly have been continuously used by the Complainant and its affiliates since June 2013 in connect with Complainant’s business of recruitment and placement of top sales professionals in the technology sector.
Complainant and Respondent worked together with Complainant’s business, according to plaintiff, from December, 2012 through May, 2013. Their business relationship was memorialized in a “Fee Split & Consulting Agreement”. Their business arrangement allegedly terminated in June 2013 and was followed by acrimonious disputes which have appeared to continue in some form to the present. Shortly after their business breakup Complainant, in June 2013, registered the business names, ETSRECRUITERS and ELITE TECHNOLOGY SALES RECRUITERS with the Ontario Ministry of Government Services and acquired the domain name <etsrecruiters.com>. The parties past business relationship and ongoing disputes raises serious doubts concerning the propriety of the UDRP as the proper avenue for resolution of this dispute.
Respondent is Lynda Pitchford / ITSR, of Toronto, Ontario, Canada. Respondent’s registrar’s address is Scottsdale, AZ, USA. The panel notes that the <etsalesrecruiters.com> domain name was registered on or about August 28, 2013.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the ETSRECRUITERS mark in connection with its recruitment activities of sales professionals for technology companies. Complainant holds no registration with any authority. However, previous panels have agreed that to establish Policy ¶ 4(a)(i) rights in a mark, a trademark registration with a governmental authority need not be on record. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Complainant argues that it has rights in the ETSRECRUITERS mark under the common law which date back to the mark’s first use on May 30, 2013, with the registration of the <etsrecruiters.com> domain name.
Prior panels have found common law rights in a mark where the mark has taken on a secondary meaning in relation to complainant as evidenced by the mark’s public recognition. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Here, Complainant offers the WHOIS information for its home site which bears the ETSRECRUITERS mark; resolving pages for the <etsrecruiters.com> domain name, LinkedIn public content asserting “[o]ver 15 years of experience sourcing and hiring top technology field sales talent”, and a Twitter profile associated with the mark. Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the production of the goods or services to which the mark is affixed. Here the Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public. As the Panel cannot speculate on scope of use or other evidence required to prove secondary meaning the Panel finds the Complainant has failed to establish common law rights dating back to 2013. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Because the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <etsalesrecruiters.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: June 29, 2015
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