29th Jan 2007

WIPO

 

WIPO Arbitration and Mediation Center

 

 

 

ADMINISTRATIVE PANEL DECISION

RR Acquisition, Inc. v. Admin, Domain

Case No. D2006-1345

 

1. The Parties

The Complainant is RR Acquisition, Inc., Connecticut, United States of America, represented by Salter & Michaelson, United States of America.

The Respondent is Admin, Domain, the Cayman Islands, United Kingdom of Great Britain and Northern Ireland, represented by ESQwire.com, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <retailrecruiters.com> is registered with Bulkregister, LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2006. The Complaint named “ieProtection.com” as the Respondent.

On October 24, 2006, the Center transmitted by email to Bulkregister (the “Registrar”) a request for registrar verification in connection with the domain name at issue. The email noted that the Complainant named “ieProtection.com” as the Respondent.

On October 24, 2006, the Registrar transmitted by email to the Center its verification response confirming that “ieProtection.com” is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On October 31, 2006, the Center transmitted a further email to the Registrar seeking clarification as to whether the registrant of the domain name was “ieProtection.com” or “Admin, Domain”, the latter being the named registrant recorded in the WHOis database for the domain name.

By email of the same date, the Center received an email from “enom.com” stating that the registrant is “Admin, Domain” at the above address.

On November 1, 2006, the Center replied to the said email from enom.com seeking further confirmation that the registrant is “Admin, Domain” and not “ieProtetion.com”. The Center also sought confirmation of who the registrar for the concerned domain name is; that is, whether it is Bulkregister or enom.com.

On November 1, 2006, the Center received an email from “enom.com” which confirmed that “Admin, Domain” is the correct registrant. It also stated that enom.com “recently acquired the registrar Bulkregister, which is the reason for enom sending confirmation.”

On November 3, 2006, the Center transmitted to the Complainant a “Complaint Deficiency Notice” (the “Notice”). The Notice stated that the Registrar had confirmed that the correct registrant as “Admin, Domain” (and not “ieProtection.com”). The Center sought the requisite amendment to the Complaint within five days of the Notice pursuant to paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

On November 3, 2006, in response to the Notice, the Complainant filed its amendment to the Complaint. The amended Complaint incorrectly named “eCommerce Advertising” as the Respondent.

On November 6, 2006, the Center acknowledged receipt of the amended Complaint. The Center also stated that, “according to the verification by the concerned registrar and the Whois information of the concerned registrar dated November 6, 2006, the registrant’s name is “Admin, Domain”. Therefore, considering the enforcement stage, please kindly identify “Admin, Domain” as the Respondent in your amended Complaint.”

On November 6, 2006, the Complainant transmitted to the Center its further amended Complaint. This further amended Complaint named “Admin, Domain” as the Respondent in these proceedings.

The Center verified that the Complaint together with the further amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 29, 2006.

The Response was filed with the Center on November 29, 2006. The Response referred to the dispute case number of this matter (i.e., D2006-1345) and listed “Domain Admin” as the Respondent, however, the Response named “Roderick W. Accetta” as the Complainant.

On November 30, 2006, the Complainant transmitted an email to the Center wherein it requested, “Am I permitted to submit any further information for the Panel’s consideration[?]”

On December 1, 2006, the Center replied to the Complainant’s email stating inter alia that “the Administrative Panel when duly appointed will be informed of the fact of the Center’s receipt of any Supplemental Filing and it will be in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision…”

On December 2, 2006, the Complainant transmitted to the Center a “Supplemental Filing in Response to Respondent’s Answer” to the Complaint (the “Supplemental Filing”). On December 4, 2006, the Center acknowledged receipt of the Supplemental Filing.

On December 4, 2006, the Respondent transmitted to the Center an email wherein it requested that, “in the event the Administrative Panel admits and considers Complainant’s Supplemental Filing, that Respondent be given an opportunity to respond to the Supplemental Filing before the Panel renders their final decision.”

The Center appointed Thomas H. Webster as the sole panelist in this matter on December 12, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 13, 2006, the Panel received the file from the Center. The file did not contain a copy of the Complainant’s Supplemental Filing. On December 14, 2006, the Panel requested the Center to forward a copy of the Complainant’s Supplemental Filing. On December 15, 2006, the Center forwarded the said Supplemental Filing to the Panel. The Center also requested whether the Panel sought to grant the Respondent the opportunity to file any supplementary material, as requested in the Respondent’s email of December 4, 2006.

On December 20, 2006, the Panel transmitted to the Center an email wherein it granted permission to the Respondent to file a reply to the Complainant’s Supplemental Filing within two weeks. On December 20, 2006, the Center informed the Respondent that the Panel had granted until January 3, 2007, to file a reply to the Complainant’s Supplemental Filing.

On December 20, 2006, the Respondent transmitted an email to the Center and sought an extension until January 10, 2007, for the filing of its said reply, which the Center acknowledged and copied to the Panel on December 21, 2006. On December 21, 2006, the Panel transmitted an email to the Center wherein it granted the Respondent’s requested extension. On the same date, the Center informed the Respondent that the Panel had granted the extension until January 10, 2007.

On January 11, 2007, the Respondent filed its Reply to the Complainant’s Supplemental Filing (the “Reply”). The Reply named “RR Acquisition, Inc.” as the Complainant and “Admin, Domain” as the Respondent.

 

4. Factual Background

The Complainant is in the business of “personnel placement services” (Complaint, paragraph V(A)). It is the owner of the following two trademarks:

(1) the stylized word mark RR, registered with the United States Patent and Trademark Office on January 31, 1978 under registration number 1084248; and

(2) the word mark RETAIL RECRUITERS, registered with the United States Patent and Trademark Office on July 1, 1980 under registration number 1137486.

The Respondent claims to have “significant experience in retail recruitment, having worked eight years as a retail recruiter” (Response, section II, page 3, and paragraph 1 of the Declaration of Sania F. Breton, attached as Exhibit 6 to the Response (the “Breton Declaration”).

The Respondent admits to having registered and being the owner of the domain name (Breton Declaration, paragraphs 2 to 4). The Respondent earns revenue from the advertisements posted on the website of the domain name (Breton Declaration, paragraph 5).

 

5. Parties’ Contentions

A. Complainant

The Complainant claims inter alia that:

“Respondent has registered Complainant’s Servicemark as a domain name and is attempting to trick consumers that it is associated or affiliated with Complainant when in fact it is not. The Respondent is also using an RR logo, displayed on its website, similar to that shown in Complainant’s Registration No. 1084248” (Complaint, section V (A)).

With respect to the Respondent having no right or legitimate interests in respect of the domain name, the Complainant claims that:

“Respondent has not been known by the name RETAIL RECRUITERS. Respondent is attempting to and has had commercial gain by using Complainant’s registered Servicemark as a domain name. Moreover, several of Complainant’s customers have been mistakenly led to Respondent’s web site and are confused as to whether Respondent is affiliated with or actually is Complainant” (Complaint, section V (B)).

The Complainant claims that the domain name was registered and is being used in bad faith, by stating that:

“Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website and other on-line locations by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. There is no question but that Respondent registered the domain name in bad faith” (Complaint, section V (C)).

In its Supplemental Filing, the Complainant notes that:

“Respondent has inaccurately identified Complainant in its Answer as Roderick W. Accetta. The correct complainant is RR Acquisition, Inc […] It should further be noted that in Respondent’s cover page to [the Center] it inaccurately identifies itself as Ieprotection.com when in fact the correct Respondent is Domain Admin…” (Complainant’s Supplemental Filing, page 1).

Further in its Supplemental Filing, the Complainant makes additional submissions with respect to the element of bad faith. It contends that the:

“Complainant is actually listed on Respondent’s web site. This proves that Respondent was aware of Complainant at the time it acquired the disputed domain name. More importantly, Respondent has intentionally misspelled Complainant’s name so that when one attempts to get to Complainant’s web site they are directed to a “page cannot be displayed message”. This shows Respondent’s bad faith in that users of the instant web site are unable to reach Complainant’s web site. […] Incidentally, when one clicks on the “www.retailrecruitersusa.com” link listed on the “page cannot be found” link they are then brought to Complainant’s web site. This certainly shows Respondent’s bad faith intent.

[…] Also, Complainant’s Registration Nos. 1137486 and 1084248 are constructive notice of its rights in the RETAIL RECRUITER and RR marks, a simple trademark search of which would have brought these registrations to the attention of Complainant. Lastly, when a Google search is done for RETAIL RECRUITERS, Complainant is the first name which appears on the search list which further goes to prove Respondent’s knowledge of Complainant and its bad faith intent when acquiring the instant domain name” (Complainant’s Supplementary Filing, page 1).

The Complainant addresses the Respondent’s argument with regard to the words “retail recruiters” being descriptive by stating that:

“Respondent has used its mark since 1973, over thirty three (33) years of continuous use, and has filed its Section 8 & 15 affidavits to maintain its Registration No. 1137486. Accordingly, Complainant’s Registration has now become incontestable and incontestable registrations cannot be challenged on grounds of descriptiveness, Park ‘N Fly v. Dollar Park and Fly, Inc. 224 USPQ 327, 469 U.S. 189 and 105 S.Ct 658. […] Since Complainant’s mark cannot be challenged on the grounds of descriptiveness, Respondent’s arguments under the ‘Legitimate Interest’ section of its Answer are not applicable” (Complainant’s Supplemental Filing, page 2).

The Complainant seeks the transfer of the domain name to the Complainant.

B. Respondent

The Respondent denies the Complainant’s arguments, and claims that:

“Complainant has failed to meet its burden of proof under each of the prongs of the Policy and the Complaint must therefore be dismissed. Respondent registered the Disputed Domain Name because it incorporates the descriptive term “retail recruiters.” “Retail recruiters” is a common term used to describe individuals and businesses that connect individuals seeking employment in the retail industry with employers.

[…] Anyone is entitled to register a domain name incorporating a generic or descriptive term and such registration establishes the registrant’s legitimate interest. Respondent has developed a web site with information about retail employment that includes advertising that generates revenue earned for Respondent. This constitutes use in connection with the bona offering of goods and services” (Response, section I, page 1).

The Respondent denies that the Respondent’s website “mimic[s] Complainant’s web site at “retailrecruitersusa.com,” or that its logo is similar or confusingly similar to the Complainant’s. The Respondent states that the:

“initials RR are natural ones to use for the two words “retail” and “recruiter”, and the two logos are not otherwise similar. Respondent was unaware of Complainant’s logo when it designed its logo. […] Respondent had no knowledge of Complainant, its business, its web site or trademarks when it registered the Disputed Domain, and Complainant has proffered no evidence to the contrary. Notwithstanding that Complainant’s mark is registered, it is extremely weak because it is descriptive. […] It is understandable why Complainant would want to use this descriptive term to describe its retail employment recruitment business, but it cannot use its trademark to preclude others from using a common term” (Response, section I, page 2).

The Respondent develops its argument that the term “retail recruiters” is descriptive by referring to the definitions of the two words as listed on the “dictionary.com” web site (attached as Exhibits 1 and 2 to the Response). From the definitions, the Respondent contends that “Complainant uses the term “retail recruiters” in its pure descriptive sense for its retail recruitment business”(Response, section II, page 2).

With respect to whether the domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent contends that it:

“takes no position as to the validity of Complainant’s mark or its applicability in these proceedings. Because Complainant has failed to meet its burden of proving that Respondent lacks a legitimate interest in the Disputed Domain and that it registered or used it in bad faith, it is unnecessary to make a determination under this prong of the Policy” (Response, section III (A), page 4).

In consideration of whether the Respondent has rights or a legitimate interest in respect of the Domain Name, the Respondent denies that the term “retail recruiters” is a distinctive term used by the Complainant, noting that it is extensively used by third parties.

To demonstrate this point, the Respondent entered the term into an advanced Google search, excluding the term “retailrecruitersusa.com” (“to eliminate references to Complainant”- Response, section II, page 2) and received some 17,900 results. The first 50 results of the search were annexed as Exhibit 5 to the Response.

In light of this, the Respondent remarks that it registered the Domain Name “simply because it was descriptive, without any knowledge of Complainant or its mark. On these facts alone the Panel should find that Respondent has a legitimate interest” (Response, section III. (B), page 4).

The Respondent refers to various cases to support its contention in this regard, and considers that as the term “retail recruiters” “appears on 17,900 third party web pages wholly unrelated to Complainant […] the Panel should find that Respondent has a legitimate interest in “retail recruiters” (Response, section III. (B), page 5).

The Respondent adds that its:

“legitimate interest is bolstered by the fact that it uses the Disputed Domain in connection with the bona fide provision of advertising services. […] It is well established that the use of a domain name in connection with a bona fide offering of goods or services establishes Respondent’s legitimate interest pursuant to paragraph 4(c)(i) [of the Policy]. […] Accordingly, because Respondent has a legitimate interest in the Disputed Domain, the Complaint should be denied” (Response, section III. (B), pages 5 to 6).

With respect to whether the domain name has been registered and is being used in bad faith, the Respondent contends that:

“registration of a descriptive term domain name does not constitute bad faith under the policy. […] There is absolutely no evidence demonstrating that Respondent registered the Disputed Domain with knowledge of Complainant’s trademark, and all evidence supports the opposite conclusion. […] The fact that the Disputed Domain is composed solely of a descriptive term subject to substantial third party and a third party trademark use further against [sic] a finding of bad faith” (Response, section III (D), pages 6 to7).

The Respondent adds that the:

“Complainant argues that Respondent’s interest is illegitimate, and that it has acted in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. But there is no evidence to support. Respondent had no knowledge of Complainant or its trademark and nothing appearing on the web site creates an impression of an association with, or sponsorship by, Complainant. There is simply no evidence of an intent to confuse. Bad faith registration and use cannot be inferred, when a mark is descriptive, particularly when, as here, there is “substantial third party use of the term.” […] Here, there are 17,900 third party uses of the descriptive term “retail recruiters”. This is a natural term to use to describe a web site offering retail recruitment information and services. Complainant has adduced no evidence supporting its hollow allegation that “there is no question but that Respondent registered the domain in bad faith” (Response, section III (D), page 7; emphasis in original).

In its Reply, the Respondent corrects its description of the parties in its Response and states that it “incorrectly [identified] Complainant in the answer as Roderick W. Accetta and [misidentified] the Respondent as Ieprotection.com in a cover letter. These were both clerical errors.” (Reply, page 1). The Panel notes that in its Reply, the Respondent lists “RR Acquisition, Inc.” as the Complainant and “Domain Admin” as the Respondent.

In its Reply, the Respondent states that it:

“absolutely did NOT intentionally misspell Complainant’s name on its web site, nor did it intentionally cause the link to fail to resolve to the correct web site. This was unintentional […] The spelling error was solely the result of an error by Balianti.com, a third party web designer hired by Respondent. […] The most likely explanation for this error is that the URLs were entered incorrectly into the database […] It is difficult to comprehend a motive for Respondent to have intentionally misspelled Complainant’s name or included a bad link” (Reply, page 1 and 2; emphasis in original).

The Respondent addresses the Complainant’s arguments with respect to its registered trademarks being “incontestable” by stating that:

“Complainant is incorrect that the fact that its mark is incontestable under U.S. trademark law means that Respondent does not have a legitimate interest in the Disputed Domain under the [Policy]. Respondent is not attempting to cancel Respondent’s (sic) mark. The point is that i) descriptive marks are weak under the [Policy] regardless of whether they are incontestable.; and ii) anyone is entitled to register a domain name incorporating a descriptive term and such registration establishes the Respondent’s legitimate interest. This also obviates bad faith.” (Reply, page 2)

The Respondent claims that the Complainant has failed to meet its burden of proving that the registration was made and used in bad faith, and seeks the Complaint be denied.

 

6. Discussion and Findings

A. Identification of the Parties

As set out in section 3 above (“Procedural History”), the Complainant incorrectly identified the Respondent in its Complaint and amended Complaint. It correctly identified the Respondent in its further amended Complaint as “Admin, Domain”.

As also set out above (section 3), the Respondent, in its Response, incorrectly identified the Complainant as “Roderick W. Accetta”. In its Reply, the Respondent corrected this error and named “RR Acquisitions, Inc.” as the Complainant.

The Panel notes that although the parties have incorrectly identified each other in their preliminary documents filed in these proceedings, they have subsequently agreed that the correct parties to these proceedings are “RR Acquisition, Inc.” as the Complainant and “Domain, Admin” as the Respondent. As a matter of confirmation, the Panel finds that these are the correct parties to these proceedings.

B. Supplemental Filing

As set out above, the parties have made supplemental filings. Neither the Policy, the Rules nor Supplemental Rules provide for this filing. The Panel’s consideration of whether to admit such filings into these proceedings was done in light of paragraphs 10(a) and 10(b) of the Rules (“General Powers of the Panel”).

The Panel considered that, as the Complainant had been given the opportunity to have its Supplemental Filing reviewed, then the Respondent ought to be given the same opportunity.

The Panel notes that the Respondent was granted until January 10, 2007, to file its Reply, but that such Reply was received by the Center on January 11, 2007. The Panel considers that no prejudice was occasioned by the delay, and notes that no objection was received from the Complainant in this regard. Accordingly, the Panel finds that the parties were treated with equality and that each party has been given a fair opportunity to present its case in accordance with paragraph 10(b) of the Rules.

As set out above, the Supplemental Filings have assisted in clarifying the proper parties to these proceedings. They have also provided further factual information to which the Panel refers below. Nonetheless, the Panel has not given any conclusive weight to the parties’ submissions in their Supplemental Filings; that is, the Supplemental Filings have not provided any further evidence which has deterred from the Panel’s findings on the Complaint and Response.

C. Issues for Consideration

Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant is required to prove that all of the above three elements are present. The Panel sets out below its findings with respect to the three elements.

(i) Identical or Confusingly Similar

This element of the Policy requires the Complainant to demonstrate that it has rights in the mark and that the domain name is identical or confusingly similar to the Complainant’s trademark.

As set out above (section 4, “Factual Background”), the Panel notes that the Complainant has two registered marks, one for the word mark RETAIL RECRUITERS (registered in 1980) and the other for the stylized mark RR (registered in 1978). The marks were first used in 1973 and 1977 respectively.

The Respondent does not contest that the Complainant has rights in these marks per se, although (as further discussed below) it does consider that the Complainant’s rights are “weak under [the Policy]” (Reply, page 2).

Accordingly, the Panel is satisfied that the Complainant does have rights in the RETAIL RECRUITERS mark.

With respect to whether the mark is identical or confusingly similar to the domain name in dispute, the Panel considers that the mark RETAIL RECRUITERS and the domain name <retailrecruiters.com> are identical. The Complainant has therefore satisfied this element under the Policy.

(ii) Rights or Legitimate Interests

This element requires the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name. However, as the panel stated in Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753:

“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.”

The Panel agrees with this approach and that once the Complainant has shown, as in this case, that it has rights to a trademark, it is up to the Respondent to demonstrate its rights or legitimate interests in the domain name.

Paragraph 4(c) under the Policy provides a non-exhaustive guide as to how this issue can be determined. Paragraph 4(c)(ii) does not apply in this case as the Respondent has not claimed that it has been commonly known by the domain name and there is no evidence to support otherwise. Further, the Respondent argues that it selected the “retail recruiters” domain name as it was a descriptive term in which (it believed) no one had any interest or entitlement.

Paragraph 4(c)(iii) is also not applicable to this case as, according to the Respondent’s submissions, the Respondent earns revenue from the web site.

Paragraph 4(c)(i) is relevant for the circumstances of this case. This Article provides that the Respondent may demonstrate legitimate interest in the domain name by showing that “before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was made] in connection with a bona fide offering of goods or services”.

Under this paragraph, the determination of the date which the Respondent acquired the domain name, and the length of time it used the domain name prior to receiving notification of the dispute, assists in considering whether there has been a “bona fide offering of goods or services”.

The parties’ evidence, however, does not address this issue with any great clarity.

It is unclear exactly when the Respondent became the registrant of the domain name. The WHOis search results show that the domain name was registered on October 30, 1997. The WHOis results indicate that the “record” was last updated on June 7, 2006, and the “database” was last updated on October 12, 2006. The “record” is stated to expire on October 29, 2007 (presumably unless it is renewed). Accordingly, it appears that the “record” represents the actual registration of the domain name (and its continued registration), whereas the “database” refers to the particular details registered therein. What updates were made to the record or database are, however, not clear.

Further, the Respondent states that it ceased using its web designer “in July 2006” due to problems incurred with the web site design (Reply, page 2). This assumes therefore that, from at least July 2006, the Respondent was the registrant of the domain name. Presumably, changes were made to the “database” on October 12, 2006. Thus, from the evidence, the Panel can determine that the Respondent was dealing with the domain name from at least July 2006.

The Complainant’s evidence is a letter dated September 25, 2006, from the Complainant to the Registrar (Bulkregister), in which the Complainant states that the Respondent’s web site “came about in Sept. 2006”. It appears therefore that the Respondent was dealing with the domain name from at least mid-2006. It is unclear, however, whether this use extends back to 1997.

Since that date, the Respondent maintains that it has legitimately used the domain name as basically a descriptive term for the area to which it relates. The Complainant maintains that the use was not legitimate.

In Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250 the Panel broadly examined this issue by considering that “[u]sing a domain name in a wholly descriptive sense to promote related goods or services can, of course, qualify as a bona fide use under the Policy”.

More specifically, in addressing the issue as to whether “mere registration of a generic term [is] sufficient to create a legitimate interest” the Panel in that case determined that this “will not be sufficient in and of itself to create a “legitimate” interest, if the respondent’s substantial intention was to capitalize on the complainant’s trademark interest.”

The Panel in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 held that “[a legitimate interest in a domain name] is different if it were shown that [the domain name] has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.”

The Center’s “Overview of WIPO Panel Views on Selected UDRP Questions” states that:

“[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.” (see also Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005; and Gorstew Limited v Worldwidewebsales.com, WIPO Case No. D2002-0744).

The central issue in the present case therefore is whether the Respondent knew of and intended to take advantage of the Complainant’s trademark rights. This issue is further set out below (“bad faith”)..

Respondent’s basic argument is that its use of the domain name was legitimate because it had no knowledge of the Complainant when it registered the domain name. However, in taking that position, the Respondent fails to explain why its web site specifically refers to the Complainant’s web site (albeit with the name misspelled). In this respect, the Respondent has expressly denied that the misspelling of the Complainant’s name on its web site was intentional, and further has provided evidence that it was the result of a third party’s (its web designer at the time) error. However, the Respondent does not provide an adequate explanation as to how and when the Respondent became aware of the Complainant’s web site.

The Respondent does however provide , a sworn statement from Ms. Sania F. Breton, “proffered under penalty of law for making false statements”, stating in pertinent part as follows:

“I am Director of International Brands. The company currently has 8 employees. I have 8 years experience in retail recruitment including Sears Canada. I was Director of Human Resources at Holt Renfrew, in Quebec, Canada for 3 years. I purchased the domain name <retailrecruiters.com> (the “Disputed Domain”) because it incorporated the descriptive term “retail recruiters” to which I believed no third party had exclusive rights. I have not yet updated the domain name registration information with our correct information, which is why the Whois information is incorrect. I did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its Web site, its business name or trademark when I registered it.”

This issue is considered further below, and in light of subsequent findings, it is not necessary for the Panel to make a finding here in relation to whether the Respondent has or has not established that it falls within paragraph 4(c)(i) of the Policy.

(iii) Registered and Used in Bad Faith

The first requirement under this heading is that the domain name has been registered in bad faith. The original registration appears to have taken place in 1997, some ten years ago. It is not clear to the Panel who registered it and why. However, it is plausible that the registration was intended to comprise two descriptive terms, and that at the time of registration the Registrant may not have been aware of the Complainant’s trademark rights. The Panel is not satisfied with the Complainant’s position on this point, as there appears to have been no explanation as to why Complainant did not notice and raise the issue regarding use of the domain name previously. The Panel has also noted the Complainant’s arguments regarding an apparent reference to its website on the Respondent’s website. However this does not of itself establish that the Respondent knew of the Complainant or its mark at the time the domain name was registered.

As regards the use of the domain name, the Panel notes that the Complainant and Respondent both appear to be active in the same part of North America and notes once again that the Respondent has apparently listed the Complainant’s web site (misspelled) on the domain name. Given that the Complainant and Respondent appear to be engaged in a similar area of business it is not inconceivable to the Panel that the current use of the domain name may be in bad faith.

However this may be, it is incumbent on a complainant to provide sufficient evidence of a respondent’s registration and use of a domain name in bad faith. In this case, the Panel does not have the evidence on which to conclude that the domain name was registered in bad faith. The domain name is also composed of what appear to be descriptive terms, and there is no substantial evidence as to the extent to which the relevant trademark is known in the applicable market. Therefore, given the limitations with respect to the proceedings under the Policy (which do not include provision for cross-examination of evidence, such as may be available should the Complainant choose to pursue the matter in court), the Complainant fails on this ground.

The Panel finds therefore that the Complainant has failed to meet the requisite standard under the Policy for proving registration and use in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Thomas H. Webster
Sole Panelist

Dated: January 29, 2007