Totaljobs Group Limited v. pramualsin kerdngam / pramualsin
Claim Number: FA1705001729723
Complainant is Totaljobs Group Limited (“Complainant”), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is pramualsin kerdngam / pramualsin (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <totaljobs.uk.com>, registered with Name.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.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on April 21, 2017.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 2, 2017, Name.com LLC confirmed by e-mail to the Forum that the <totaljobs.uk.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On May 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@totaljobs.uk.com. Also on May 2, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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 contends as follows:
Complainant, Totaljobs Group Limited, is a collection of online job boards for the United Kingdom based in London, England. In connection with this business, Complainant uses the TOTALJOBS mark to promote its goods and services.
Complainant has rights in the mark based upon registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. EU001407295, registered Dec. 18, 2000).
Respondent’s domain name, <totaljobs.uk.com>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the country-code top-level domain (“ccTLD”) “.uk” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to register a domain name reflecting its mark. Further, Respondent has failed to use the at-issue domain name in connection with a bona fide offering of goods or services. Instead, the domain name resolves to a webpage resembling Complainant’s and offering services in competition with Complainant.
Respondent registered and used the disputed domain name in bad faith. Respondent uses the disputed domain name to sell products in competition with Complainant. Respondent registered the domain name in bad faith to take advantage of the goodwill in Complainant’s TOTALJOBS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration for its TOTALJOBS mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the TOTALJOBS mark.
Respondent is not authorized to use Complainant’s trademark.
The at-issue domain name addresses a website resembling Complainant’s and offers services in competition with those offered by 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 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 or has been used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in the TOTALJOBS mark under Policy ¶ 4(a)(i) through its registration of such mark via the UKIPO. See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent’s <totaljobs.uk.com> domain name contains Complainant’s entire TOTALJOBS trademark followed by the “.uk” country code top level (ccTLD) and the generic top-level domain name (gTLD) “.com”. The addition of a ccTLD and a gTLD are irrelevant to Policy ¶ 4(a)(i) similarity analysis. Therefore, the Panel finds that the <totaljobs.uk.com> domain name is identical to Complainant’s TOTALJOBS trademark under Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <totaljobs.uk.com> domain name lists “pramualsin kerdngam” as its registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain and Respondent makes no claim that it is known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <totaljobs.uk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Respondent uses its trademark identical domain name to address a website resembling one owned by Complainant. There it offers services in competition with those services legitimately offered by Complainant. For instance, Respondent’s website promotes a job in education services: “Tutor for Science and Math.” Numerous other job offerings are likewise displayed. Using the trademark identical <totaljobs.uk.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); cf. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the at-issue domain names pursuant to paragraph 4(a)(iii) of the Policy.
Complainant claims Respondent exhibits a pattern of bad faith domain name registrations. Respondent is the owner of several domain names that are oriented to “job seekers” and which potentially infringe third party trademark rights. However, there is no evidence showing that Respondent either registered multiple domain names involving Complainant’s trademark, or evidence of Respondent’s being subject to prior adverse domain name related decisions. Cf, Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)). The Panel therefore discounts Respondent’s third party registrations as evidence of bad faith in the instant dispute.
More significantly and as mentioned above regarding rights and interests, Respondent uses its trademark identical <totaljobs.uk.com> domain name to address a website offering job seeking services competing with those offered by Complainant. Respondent’s website even resembles Complainant’s official website, although the site is different in design. The website thus acts to further confuse Complainant’s trademark and Respondent’s <totaljobs.uk.com> domain name.
It follows from the foregoing that Respondent registered and uses the at-issue domain name in bad faith to take advantage of the goodwill residing in Complainant’s TOTALJOBS mark. Respondent’s use of the <totaljobs.uk.com> domain name to compete with Complainant by feigning Complainant’s support of the <totaljobs.uk.com> website indicates Respondent’s bad faith registration and use per Policy ¶ 4(b)(iii) & (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <totaljobs.uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 31, 2017
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