DECISION

Avidweb Technologies Inc. v. Gary Upah

Claim Number:  FA0304000155467

PARTIES

Complainant is Avidweb Technologies Inc., Naperville, IL (“Complainant”), of Avidweb Technologies Inc. Respondent is Gary Upah, Stilwell, KS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <jobbex.net> and <jobbex.biz>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 24, 2003; the Forum received a hard copy of the Complaint on April 28, 2003.

On April 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <jobbex.net> and < jobbex.biz> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. 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 April 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 19, 2003 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@jobbex.net and postmaster@jobbex.biz by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <jobbex.net> and <jobbex.biz> domain names are identical to Complainant’s JOBBEX mark.

2. Respondent does not have any rights or legitimate interests in the <jobbex.net> and < jobbex.biz> domain names.

3. Respondent registered and used the <jobbex.net> and <jobbex.biz> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Avidweb Technologies, Inc., holds a U.S. Patent and Trademark Office (“USPTO”) registration for JOBBEX (Reg. No. 2,576,300), registered on the Principal Register on June 4, 2002. Complainant’s USPTO registration indicates first use of the JOBBEX mark commenced in November 2000. Complainant’s registration denotes “Computer software for posting jobs, storing candidates’ resumes and storing employers’ records for the human resources industry.”

Respondent, Gary Upah, registered the <jobbex.net> and <jobbex.biz> domain names on April 4, 2003. Complainant’s investigation of Respondent’s use of the subject domain names reveals that they are used to offer goods and services (a group of Internet job boards and recruiting services) in competition with Complainant’s offerings.

Complainant’s submission indicates that Respondent desired to enter into a business relationship with Complainant, but the partnership never came to fruition. Subsequent to this failure, Respondent registered the disputed domain names. 

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the JOBBEX mark through registration with the USPTO and continuous use of the mark in commerce since 2000. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <jobbex.net> and <jobbex.biz> domain names are identical to Complainant’s JOBBEX mark. Respondent’s domain names incorporate Complainant’s mark in its entirety, and only deviate by the addition of the top-level domains (“TLD”) “.net” and “.biz.” Because top-level domains are a required feature in a domain name, their presence is not relevant when conducting a Policy ¶ 4(a)(i) “identical” analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name, such as “.net” or “.com,” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of Domain Names," Section I (Sept. 29, 1999) (“When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address"); see also Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” TLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to contest Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain names. Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent. Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Complainant asserts unrefuted circumstances that indicate Respondent registered the subject domain names in response to a failed business agreement between it and Complainant. Moreover, Respondent’s domain names resolve to a website that offers services that compete with Complainant’s products and related services. Because Respondent’s sole purpose in selecting the domain names was to cause confusion with Complainant’s JOBBEX mark, its use of the domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it constitute any other fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also  Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Respondent is not authorized or licensed by Complainant to make use of the JOBBEX mark in the domain names. Evidence reveals that Respondent’s infringing domain names were registered as retribution for Complainant terminating Respondent’s proposed business arrangement. No evidence before the Panel suggests Respondent is commonly known by the <jobbex.net> or <jobbex.biz> domain names under Policy ¶ 4(c)(ii). There is a presumption that Respondent is not commonly known by domain names that are identical to another’s registered mark, and no evidence has rebutted that presumption in the current dispute. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

As stated, Respondent’s motivation to register the infringing domain names was an attempted business relationship with Complainant, which failed. Circumstances indicate that Respondent was aware of Complainant’s rights in the JOBBEX mark because it was seeking copyright-protected JOBBEX software for its web development business. Further, Complainant’s JOBBEX trademark was registered on the USPTO’s Principal Register when Respondent registered the subject domain names, a status imputing knowledge on those seeking to register identical or confusingly similar variations of the mark. Therefore, Respondent’s decision to register the infringing domain names, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent used the <jobbex.net> and <jobbex.biz> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). Specifically, uncontested evidence indicates that the subject domain names are used in connection with Respondent’s business. Thus, the Panel infers that Respondent commercially benefits from its use of Complainant’s JOBBEX mark in the domain names. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <jobbex.net> and <jobbex.biz> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  June 2, 2003

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