Bold Limited v. Daniel Brown
Claim Number: FA1702001718460
Complainant is Bold Limited (“Complainant”), represented by Lara Holzman of Alston & Bird LLP, New York, USA. Respondent is Daniel Brown (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myperfectresume-cv.com>, registered with GoDaddy.com, LLC.
The undersigned certifies she 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 Forum electronically February 22, 2017; the Forum received payment February 22, 2017.
On February 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myperfectresume-cv.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 February 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2017, 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@myperfectresume-cv.com. Also on February 23, 2017, 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 March 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant provides career planning, resume, and employment counseling services. Complainant uses the MY PERFECT RESUME and MY PERFECT CV marks (“Bold marks”) in conjunction with its business practices. Complainant registered the MY PERFECT RESUME mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,780,241, registered July 28, 2015). See Compl., at Attached Ex. 7. Although not registered, Complainant uses the MY PERFECT CV mark for its <myperfectcv.co.uk> website, registered May 6, 2013. See Compl., at Attached Exs. 6, 9. Respondent’s <myperfectresume-cv.com> is confusingly similar to Complainant’s MY PERFECT RESUME and MY PERFECT CV marks because it incorporates both marks in their entirety, eliminating spaces, while adding a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <myperfectresume-cv.com>. Respondent is not commonly known by the disputed domain name. Complainant did not authorize or license Respondent to use the Bold marks in any regard, and Respondent is not affiliated with Complainant. Respondent makes no bona fide offering of goods or services, and makes no legitimate non-commercial or fair use of the domain. Respondent’s <myperfectresume-cv.com> resolves to a website offering services in direct competition with Complainant’s business. See Compl., at Attached Ex. 10.
Respondent registered and is using <myperfectresume-cv.com> in bad faith. The disputed domain name creates confusion among Internet users by diverting them to Respondent’s website for commercial gain. Respondent registered <myperfectresume-cv.com> with at least constructive knowledge of Complainant and its rights to the Bold marks.
Respondent did not submit a response. The Panel notes that Respondent registered <myperfectresume-cv.com> August 18, 2016.
Complainant established legal and/or common law rights and legitimate interests in its protected marks.
Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name containing in their entirety Complainant’s protected marks and registered and uses the disputed domain name in bad faith.
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 or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant provides career planning and employment counseling services. Complainant uses the Bold marks in conjunction with its business practices. Complainant claims it registered the MY PERFECT RESUME mark with USPTO (e.g., Reg. No. 4,780,241, registered July 28, 2015). See Compl., at Attached Ex. 7. The general consensus among Panels is that registrations with USPTO are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant established rights in the MY PERFECT RESUME mark under Policy ¶ 4(a)(i).
Although not registered, Complainant states it uses the MY PERFECT CV mark for its <myperfectcv.co.uk> website, registered May 6, 2013. See Compl., at Attached Exs. 6, 9. “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Common law rights are established through providing evidence of a secondary meaning gained through a number of means. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant asserts that it has used the Bold marks prominently on the resolving website, <myperfectcv.com>. See Compl., at Attached Ex. 9. Therefore, the Panel finds that Complainant’s domain ownership and use is sufficient to show rights in the MY PERFECT CV mark.
Further, Complainant asserts that Respondent’s <myperfectresume-cv.com> is confusingly similar to Complainant’s MY PERFECT RESUME and MY PERFECT CV marks because it incorporates both marks in their entirety, eliminating spaces, while adding a hyphen and the “.com” gTLD. “Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).” U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007). Likewise, “[t]he addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.” Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003). The Panel finds that Respondent’s <myperfectresume-cv.com> is confusingly similar to Complainant’s Bold marks.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 does not have rights or legitimate interests in <myperfectresume-cv.com> because Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Daniel Brown.” See Amend. Compl., at Attached Ex. 1. “Given the WHOIS contact information for the disputed domain [name], one can infer that [r]espondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). See also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). “Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the [disputed] domain name. Such a lack of evidence is sufficient to allow [the] Panel to find Respondent has no rights to such a mark.” BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015).
Complainant notes it did not authorize or license Respondent to use the Bold marks in any way and Respondent is not affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant illustrates that Respondent’s <myperfectresume-cv.com> resolves to a website offering services in direct competition with Complainant’s business. See Compl., at Attached Ex. 10. Panels have found a respondent does not use the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) when Respondent uses the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site. Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003). Where “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name,” the Panel finds that Respondent does not have rights or legitimate interests in disputed domain such as <myperfectresume-cv.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Forum July 16, 2002).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name containing a combination of Complainant’s protected marks;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent registered and is using <myperfectresume-cv.com> in bad faith. Respondent’s <myperfectresume-cv.com> resolves to a website offering services in direct competition to Complainant. See Compl., at Attached Ex. 10. Complainant maintains that the disputed domain name creates confusion among Internet users by diverting them to Respondent’s website for commercial gain. A “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, [satisfies elements of] bad faith per Policy ¶ 4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015). Furthermore, “[r]egistration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.” Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003). Therefore, the Panel finds that Respondent registered and is using <myperfectresume-cv.com> in bad faith under the Policy.
Finally, Complainant contends that Respondent registered <myperfectresume-cv.com> with at least constructive knowledge of Complainant and its rights to the Bold marks. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels find “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Because the link between the complainant's mark and the content advertised on the respondent's website is obvious, the respondent "must have known about the [c]omplainant's mark when it registered the subject domain name." Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002). Where Respondent shows actual knowledge of Complainant's marks when it registered the domain name, given the combined marks in the disputed domain name and the identical use that Complainant makes, the Panel finds that Respondent registered and used the disputed domain name in bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190. (Forum Apr. 10, 2006).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used a disputed domain name containing elements of both of Complainant’s protected marks and did so in bad faith; Complainant satisfied 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 GRANTED.
Accordingly, it is Ordered that the <myperfectresume-cv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 10, 2017
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