JS Media Inc. v. Joanne Collins
Claim Number: FA2008001907908
Complainant is JS Media Inc. (“Complainant”), represented by Ryan Masters of Indeed, Inc., Texas, USA. Respondent is Joanne Collins (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youresimplyhired.com> (“Domain Name”), registered with NameCheap, Inc..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2020; the Forum received payment on August 11, 2020.
On August 11, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <youresimplyhired.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 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@youresimplyhired.com. Also on August 18, 2020, 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.
A timely Response was received and determined to be complete on August 19, 2020.
On August 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a job hunting website and search engine. Complainant has rights in the SIMPLY HIRED mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,262,130, registered July 10, 2007). Respondent’s <youresimplyhired.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “youre” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondents has no rights or legitimate interests in the <youresimplyhired.com> domain name as Respondent is not commonly known by the Domain Name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is offering a competing job hunting service through the website accessible at the Domain Name (“Respondent’s Website”).
Respondent registered and used the <youresimplyhired.com> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by offering a competing job search service. Furthermore, Respondent had actual or constructive knowledge of Complainant’s rights in the SIMPLY HIRED mark at the time of registration.
B. Respondent
The Response in this case is somewhat confusing and difficult to summarize. Respondent makes reference to the Complainant being owned by a Japanese recruitment company, offers to transfer the Domain Name but not the website at the Domain Name [The Panel notes that the only remedy available under the Policy is transfer or cancellation of a Domain Name] and queries whether there is a connection between the SIMPLY HIRED Mark and the Domain Name. The Respondent does not respond to the claim of bad faith registration and use, and in response to the claim that she lacks rights and legitimate interests in the Domain Name states “Well this means that something that I created isn’t really mine in the first place. is unfair to me as The Client did not create it in the first place.” It is not clear what entity Respondent refers to when referring to “The Client”.
Complainant holds trademark rights for the SIMPLY HIRED mark. The Domain Name is confusingly similar to Complainant’s SIMPLY HIRED mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 and is being used in bad faith.
Complainant has rights in the SIMPLY HIRED mark through its registration with the USPTO (e.g., Reg. No. 3,262,130, registered July 10, 2007). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <youresimplyhired.com> domain name is confusing similar to Complainant’s SIMPLY HIRED mark as it wholly incorporates the SIMPLY HIRED mark and then adds the misspelled term “youre” and a “.com” generic top-level domain (“gTLD”). Addition of generic term and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SIMPLY HIRED mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Joanne Collins” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which, while it has the title “Job Posts and Employment”, does not appear to operate a functional job hunting service. The Respondent’s Website does not list any jobs, provide the contact details of the operator of the website or contain any functional means for potential employers to contact the website operator to post a job they are advertising. In short this is a website purports to offer a competing job hunting service but does not actually offer any employment options or provide employers with any means of listing jobs. In the circumstances, I am not satisfied that Respondent’s use of the Domain Name for a site that has the pretext of offering a job hunting service, but actually does nothing of the sort, is a bona fide offering or legitimate non-commercial use.
The Response provides no evidence that the Respondent’s Website is in development or any other evidence to show that the Respondent has rights or legitimate interests in the Domain Name. The Panel finds that Respondent fails to actively use the Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 30, 2020, Respondent had actual knowledge of Complainant’s SIMPLY HIRED mark. Complainant has been trading under the SIMPLY HIRED Mark since at least 2005 and it would be implausible if, taking the Respondent’s claims at their highest, Respondent had sought to register the Domain Name to operate a job hunting site without being aware of Complainant, at least through conducting an Internet search. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the SIMPLY HIRED mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent’s purported use of the Domain Name for a job-hunting website is not use in good faith as the Respondent’s Website does not offer jobs, or a means for employers to list employment opportunities. Rather Respondent has registered a Domain Name wholly incorporating the SIMPLY HIRED Mark and put up a pretextual website that purports, but does not actually, offer employment options. Given the absence of any evidence of good faith use the Panel finds on the balance of probabilities that Respondent has sought to use the Domain Name in a manner that would take advantage of any similarity with the Complainant and its SIMPLY HIRED Mark, either through diverting consumers to the Respondent’s Website, which is supported by advertisements (which are displayed on the Respondent’s Website), or for other purposes.
Use of an identical or confusingly similar domain name to redirect Internet users to a website containing advertisements for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
In the present case, given the nature of the Domain Name, the lack of genuine use and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youresimplyhired.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 25, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page