Generic Top Level Domain Name (gTLD) Decisions

DECISION

Korn/Ferry International v The CareerMosaic Cornperry, Inc.

Claim Number: FA0104000097117

PARTIES

Complainant is Korn/Ferry International, USA (“Complainant”) represented by Dean J. Zipser, of Morrison & Foerster LLP.  Respondent is Kim Young and The CareerMosaic Cornperry, Inc., Seol, II, Korea (“Respondent”) represented by Jae Hoon Kim, of Lee & Ko.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cornferry.com>, <kornperry.com>, and <cornperry.com>, registered with Network Solutions, Inc.

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.

Honorable Paul A. Dorf, (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 30, 2001; the Forum received a hard copy of the Complaint on April 30, 2001.

On May 1, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <cornferry.com>, <kornperry.com>, and <cornperry.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 May 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2001 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@cornferry.com, postmaster@kornperry.com, and postmaster@cornperry.com by e-mail.

A timely response was received and determined to be complete on May 21, 2001.

On May 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain names at issue are virtually identical to their well established service mark, as the Complainant’s mark is registered, valid, incontestable and strong, and the domain names are confusingly similar to Complainant’s service mark; that the Respondent has no legitimate interest in the domain names at issue as the Respondent had ample notice of its improper use, that Respondent is not commonly known by the domain names at issue, and Respondent’s use of the domain names is not a legitimate non-commercial or fair use of Complainant’s mark; and that the Respondent registered the domain names at issue in bad faith.

B. Respondent

The Respondent contends that the domain names at issue are not identical or confusingly similar to Complainant’s service mark as Respondent’s mark (CornPerry) is registered, valid, contestable and strong in Korea; that the Respondent has rights and legitimate interests in the domain names, that Respondent has used the domain names in connection with a bona fide offering of goods and services, that the Respondent has a valid and lawfully registered service mark; and that the Respondent did not register the domain names in bad faith.

C. Additional Submissions

On May 29, 2001, the Complainant filed a response to Respondent’s Response, which was considered timely.

FINDINGS

The Complainant is an executive recruitment company that has been in business for over 30 years

The Respondent is an information management service company operating in Korea and conducts a general advertising business, including Internet recruiting advertising and resume database services for recruiters in Korea, and various employment services, computer services, real estate services, and mail order sales.

The Complainant owns two United States Service Mark Registrations, one for Korn/Ferry International® and Korn/Ferry Carre Orban International® . 

The Respondent owns a service mark registration for CornPerry in the Republic of Korea.

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.

Identical and/or Confusingly Similar

The Complainant has used the mark Korn/Ferry continuously for more than 30 years.   While the word "Ferry": is a common English word, the word "Korn" is not.  Used together they create the Complainant’s famous mark.  The domain names at issue appear to be misspellings of the Complainant’s mark, which do not create a distinct mark.  One of the most common mistakes made by Internet users is to misspell the word when attempting to locate a company.  The Respondent did not register the Cornperry service mark until 1998, well after the Complainant began using its mark.  See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks)

Further, both the Complainant and Respondent operate within the same industry and this could cause confusion among internet users looking for the Complainant’s services.  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (noting that “Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources”).

Finally, the transliteration of the domain names in Korean is identical to Complainant’s mark.  See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).

Rights or Legitimate Interests

The Respondent was placed on notice by the Complainant of its improper use of the domain name.  The Respondent ceased much of its infringing behavior and withdrew the registration of "cornperry.com.” The Respondent then registered the "cornperry.com" domain name again.  

Further, the Respondent offers similar services as Complainant and operates under a name confusingly similar to Complainant’s mark.  This does not constitute a bona fide offering of services by the Respondent, as they are both engaged in offering similar services.   See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding no rights or legitimate interests were acquired by Respondent where Respondent registered and used a domain name that was a misspelling of Complainant’s PENTHOUSE mark and connected the domain name to a web site offering similar goods and services as Complainant).

Registration and Use in Bad Faith

From the evidence presented, it appears that Respondent has “attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or a product or service of [the] website or location.”  Policy ¶ 4(b)(iv).  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainant’s business).

In addition, as the Respondent and Complainant are engaged in the same industry, the Respondent should have been aware of the Complainant’s famous mark.  Its registration of the domain names at issue clearly constitutes bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000)  (holding that the Respondent should have known of the Complainant’s marks at the time of registration given the widespread use and fame of the Complainant’s “Deutsche Bank” mark).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain names "cornferry.com", "kornperry.com" and "cornperry.com" be transferred from the Respondent to the Complainant.

Honorable Paul A. Dorf, Panelist

Dated:  June 7, 2001

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