RMC of Illinois Inc. v.
Claim Number: FA0706000998091
PARTIES
Complainant is RMC of Illinois, Inc. (“Complainant”), represented by Gary
H. Saposnik, of IpHorgan Ltd,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rightmanagment.com>, registered with
Compana
LLC.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 6, 2007.
On June 29, 2007, Compana LLC confirmed by e-mail to the National
Arbitration Forum that the <rightmanagment.com>
domain name is registered with Compana LLC and that the Respondent is the
current registrant of the name. Compana LLC has verified that Respondent is bound
by the Compana LLC registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 5, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 25, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@rightmanagment.com by e-mail.
A timely Response was received and determined to be complete on July 25, 2007.
A timely and complete Additional Submission was received from
Complainant on July 30, 2007.
On July 31, 2007, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, RMC of Illinois, Inc. (RMC) asserts that it is the world’s
leading career transition and organizational consulting firm and is the owner
of several RIGHT family service marks registered with the U.S. Patent and
Trademark Office. Complainant also has
obtained registration in other countries.
The marks include RIGHT MANAGEMENT CONSULTANTS and RIGHT
MANAGEMENT. Complainant also has several
registered domains including <right.com>, <rightmanagement.com> and
<rightmanagementconsultants.com>.
Complainant contends that Respondent’s domain name is identical and/or
confusingly similar because it consists of Complainant’s mark(s) except for a
typographical error. Complainant also
asserts that Respondent has no rights or legitimate interests because the
website in dispute features links to competitors and is a click through
site. Complainant additionally argues
that Respondent’s registration and use is in bad faith due to its creation of a
likelihood of confusion with Complainant’s marks.
B.
Respondent
Respondent, Texas International Property (TIP) contends that the
disputed domain name, <rightmanagment.com>
is generic and/or descriptive and not identical to any mark in which
Complainant has any enforceable rights.
Respondent also asserts that it has rights due to its website links
being generated by search engine request and that it has no intent to target Complainant. Respondent claims that it registered the
disputed domain because “it believed it was a descriptive item to which no
party had exclusive rights” and that belief evidences Respondent’s good faith
intent to register common generic words.
Respondent further contends that by demonstrating Complainant’s alleged
marks are generic and/or merely descriptive it follows that Respondent did not
register and is not using the disputed domain in bad faith.
C.
Additional
Submissions
Complainant timely filed an Additional Submission where Complainant
noted Respondent’s failure to successfully defend at least seven (7) UDRP
decisions filed since the filing of the Complaint in the instant dispute. Complainant indicated that each of these
cases included similar arguments to support Respondent’s cases but none were
persuasive. Complainant reasserted its
contentions regarding the confusing similarity of the disputed domain with its
RIGHT family registrations noting that Respondent did not deny the
contention. Complainant also indicated
that Respondent could easily have found out about Complainant’s various registrations
through a simple Internet search or manual search of local phone directories
since Complainant’s offices include several in the area where Respondent is
located.
FINDINGS
Complainant, RMC, is a large multinational
business providing career transition and organizational consulting
services. Complainant has offices in
more than 300 service locations in 42 countries, including more than 100
offices in the
Respondent, TIP, is a business located
principally in
Rule 18(a) of the UDRP gives the Panel the discretion to suspend or terminate the administrative proceeding or proceed to a decision. Panels have gone forward on numerous occasions despite the pendency of a lawsuit. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties’ respective trademark rights in federal court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002) (deciding to proceed despite the complainant filing suit in federal court for trademark and service mark infringement); see also Louis Vuitton Malletier S.A. v. Manifest Info. Servs., FA 796276 (Nat. Arb. Forum Nov. 7, 2006) (deciding to proceed with a decision under the authority of Rule 18(a) and thus rejected the respondent’s request for termination or suspension of the administrative proceeding).
In the instant
proceeding Respondent chose a court of dubious jurisdiction and instituted
court proceedings on or about the same time that an answer was due in this administrative
matter. These actions indicate an
attempt to delay or usurp the UDRP process and such actions are generally
frowned upon. See Citigroup Inc. v. Citibank, N.A., FA 1011822 (Nat. Arb. Forum July 23, 2007); see also Zappos.com, Inc. v.
Zappos.com Inc, FA 999674 (Nat. Arb. Forum July 18,
2007); see also KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations
LLC, FA 876390 (Nat. Arb. Forum Feb. 20, 2007).
Respondent has also
requested an in-person hearing should the UDRP proceedings go forward. Rule 13 of the UDRP gives the panel the
discretion to determine that an exceptional matter exists that requires an
in-person hearing to render a decision.
Respondent has provided no explanation as to why this matter is
exceptional and the Panel does not find that it is so. Parties to a UDRP proceeding can avail
themselves of the courts before, during, and after the UDRP action has been
considered. Merely filing a parallel
judicial action does not transform the pending UDRP proceeding into something
exceptional. In fact the rendering of a
swift, well-resolved UDRP decision may assist the parties in saving misguided
litigation expenses.
Respondent’s request that
the decision by the Panel not be published could prevent the parties and others
from receiving the mutually beneficial
assistance that is the foundation of the UDRP’s existence. ICANN Rule 4(j) mandates that all UDRP
decisions be published in full over the Internet. Pursuant to that requirement NAF Supplemental
Rule 15(a) also states that NAF decisions must be published in full on a
publicly accessible website.
Respondent’s requests when viewed in full paint a
picture of calculated efforts to delay, circumvent, and otherwise disrupt the
UDRP process which is unfortunate, especially in light of the requirement that
Complainant carries the burden of proving each of the three elements under
ICANN Policy ¶4(a). Respondents’s tactics
clearly indicate that Respondent’s belief in the substance of its case is weak
and gives rise to an inference that good faith is lacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant, RMC, has registered the mark
RIGHT MANAGEMENT CONSULTANTS (Reg. No. 2,320,263 issued Feb. 22, 2000) with the
United States Patent & Trademark Office (USPTO). RMC also registered the mark RIGHT
MANAGEMENT in various countries (i.e.
Reg. No. 1,106,761 issued Nov. 23, 2006 by the
The Respondent’s
domain name <rightmanagment.com> is
confusingly similar to Complainant’s marks.
The domain name contains the whole mark or the first two words of
Complainant’s marks although with a slight, but calculated misspelling of the
word “management.” The disputed domain
also adds the generic top-level domain (“gTLD”) “.com,” which is inconsequential
as a top-level domain is a required element of all domain names. See WestJet Air Ctr., Inc. v.
W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001)
(finding that the <westjets.com> domain name is confusingly similar to
the complainant’s mark, where the complainant holds the
Respondent’s contention that the disputed domain is generic or descriptive based on the individual words, “right” and “management,” as well the phrase “right management” is unpersuasive. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). Respondent’s efforts to align its position with favorable Panel decisions in this regard rest almost exclusively on cases that feature properly spelled words as opposed to the calculated misspelling that took place in securing the domain in dispute.
Complainant has
proven this element.
Complainant, RMC, correctly points out that Respondent is not commonly known by the disputed domain name <rightmanagment.com> and further that Respondent has not received any authorization to use RMC’s marks in any form. This supports Complainant’s contention that Respondent does not have rights or legitimate interests in the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Additionally the disputed domain,
constituting a common typing error, is indicative of “typosquatting” that
further belies a lack of rights or legitimate interests. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
Moreover, Complainant asserts that Respondent is using the <rightmanagment.com> domain name to host websites that display hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Such use normally does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent attempts to prove positive rights through negative assertions relative to Complainant’s interest. Respondent paints itself as an Internet altruist claiming to register the disputed domain believing it was a good domain for sponsored listings “by any of the thousands of separate companies and individuals who use ‘right or management’… on the Internet.” Contrary to the cases Respondent relies on Respondent fails to show that it seeks to use the disputed domain for itself or for others engaged in the specific activities it claims the disputed domain describes.
Complainant has
proven this element.
Respondent is benefiting from the likelihood
of confusion between Complainant’s marks RIGHT MANAGEMENT CONSULTANTS and RIGHT
MANAGEMENT and its domain name <rightmanagment.com>. This benefit for commercial gain has been
held to demonstrate bad faith registrations and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where the respondent directed Internet users seeking
the complainant’s site to its own website for commercial gain).
Furthermore Respondent is clearly engaged in typosquatting which is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally TIP has been the Respondent in numerous UDRP cases, and has repeatedly made the same faulty arguments and baseless contentions resulting in the disputed domain names being transferred. These proceedings are also evidence that Respondent is guilty of bad faith registration and use under Policy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question did not link to any on-line presence or website).
Complainant has
proven this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rightmanagment.com> domain name be TRANSFERRED
from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 14, 2007
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