Claim Number: FA0706001011316
Complainants are Internet
Employment Linkage, Inc. and Inside Higher Ed, Inc. (collectively,
“Complainant”), represented by David A.W. Wong, of Barnes & Thornburg
LLP, 11 South Meridian Street, Indianapolis, IN 46204. Respondent is Robert Kuhne a/k/a Domain
Names Holdings Ltd (“Respondent”),
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <insidehigheredjob.com>, <insidehigheredjobs.com>, and <insidehigheredjobs.info>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com, and <higheredjob.org>, registered with Schlund + Partner AG.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2007.
On June 19, 2007, Schlund + Partner AG confirmed by e-mail to the National Arbitration Forum that the <higheredjob.org> domain name is registered with Schlund + Partner AG and that Respondent is the current registrant of the name. Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG 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 June 20, 2007, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <insidehigheredjob.com>, <insidehigheredjobs.com>, and <insidehigheredjobs.info> domain names are registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On June 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 11, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A hard copy of the Response was received on July 11, 2007. However, the National Arbitration Forum did not receive the Response in electronic copy until after the deadline for Response. Therefore, the National Arbitration Forum has deemed the Response deficient pursuant to Supplemental Rule 5(b).
Complainant filed a timely Additional Submission on July 17, 2007. Respondent filed a timely Additional Submission on July 23, 2007.
On July 23, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends that the domain names <insidehigheredjob.com>, <insidehigheredjobs.com>, <higheredjob.org> and <insidehigheredjobs.info> are confusingly similar to Complainant’s service marks HIGHEREDJOBS.COM and INSIDE HIGHER ED, and the <higheredjobs.com> and <insidehighered.com> domain names, Complainant’s domain names.
Complainant alleges Respondent has no rights or legitimate interests in the disputed domain names but merely uses them to divert Internet users to his website which offers services that compete with those of Complainant.
Complainant also contends Respondent’s use of the domain names is in bad faith because he is attempting to deceive Internet users by creating a false impression of an affiliation with Complainant in furtherance of his competing business.
Respondent seeks dismissal of the Complaint on the ground that the Complaint is comprised of two entities who do not have a sufficient nexus with each other to maintain the Complaint as entities that have a common right to the domain names asserted in the Complaint.
Alternatively, Respondent denies the merits of Complainant’s contentions. Respondent asserts that the domain names are made up of common terms that are not protected by Complainant’s trademark registrations. Respondent also asserts that he has been using the common terms since 1999, several years prior to Complainant’s registrations. Respondent contends he uses the disputed domain names in a bona fide offering of goods and services and denies he registered the domain names in bad faith.
C. Additional Submissions
Complainant in its Additional Submission defends its rights to make the claim on behalf of both entities and accuses Respondent of ignoring the fact that the common terms in the trademarks are accompanied by distinctive terms which together give the marks protected status. Complainant also cites to its use of its marks in 1994, 1996, and 2004 and alleges that Respondent’s use of metatags does not establish trademark rights.
Respondent in his Additional Submission accuses Complainant of erroneous statements and alleges Complainant has not demonstrated a sufficient link between the entities. Respondent realleges its previous contentions regarding Complainant’s effort to seek protection for merely descriptive and generic terms.
The two entities that comprise Complainant are Internet Employment Linkage, Inc. (“IEL”) and Inside Higher Ed, Inc. (“IHE”). The nexus between them is a consent agreement they entered in which they show they have agreed between themselves regarding their respective rights in their trademarks HIGHEREDJOBS.COM and INSIDE HIGHER ED.
IEL owns and operates the <higheredjobs.com> domain name and associated website. It offers personnel placement and recruitment services on its website. IHE owns and operates the <insidehighered.com> domain name and associated website. It provides news, opinions and information concerning higher education on its website, including job postings. IEL owns the trademark registration for HIGHEREDJOBS.COM and has been using that mark since 1996. IHE owns the registration for INSIDE HIGHER ED and has been using that mark since 2004.
Respondent registered its disputed domain names in 2006 and 2007. Those domain names resolve to a website which displays the mark ACO ACADEMIC CAREERS ONLINE. Respondent is not commonly known by Inside Higher Ed Job, Inside Higher Ed Jobs or Higher Ed Job. Respondent has no trademark or service mark registration incorporating those terms. Respondent offers services that compete with those of IEL and IHE.
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 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;
(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.
There are two preliminary issues. One issue concerns Respondent’s deficient response pursuant to ICANN Rule 5 and Forum Supplemental Rule 5, due to the late filing of the electronic copy. The Panel finds that the hard copy of the response was timely filed and does not believe the late filing of the electronic copy has caused prejudice. The Panel therefore will consider the response. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007).
The second preliminary issue concerns the two entities as one Complainant. Under UDRP Rule 3(a), a single person or entity “or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint” may initiate a filing. The redacted agreement furnished by IEL and IHE demonstrates that the two entities have reached an understanding regarding their mutual and respective rights in the disputed domain names and that those rights are intertwined. Under the principles discussed in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel finds this is a sufficient nexus and thus a sufficient reason to permit the two entities to bring the complaint as one entity. It is difficult to see how Respondent suffers any prejudice by the joinder of the two entities in a single complaint. Prejudice is not shown by mere assertions of unfairness. Respondent’s objection is without merit.
Complainant has established its rights in its
marks through registration with the United States Patent and Trademark
Office. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006). Even though the marks
contain generic terms, the overall marks are protectible for purposes of
determining Complainant’s rights under Policy ¶ 4(a)(i). See David Hall Rare Coins v.
The disputed domain names <insidehigheredjob.com>, <insidehigheredjobs.com>, <higheredjob.org>, and <insidehigheredjobs.info> are clearly confusingly similar to Complainant’s marks. The alterations by Respondent do not sufficiently distinguish the disputed domain names from Complainant’s marks within the meaning of Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007).
Respondent is not commonly known by the disputed domain names. He does business under the ACO ACADEMIC CAREERS ONLINE mark and is using the domain names to redirect Internet users to his website, which offers services that compete with Complainant’s services. Respondent does not have rights or legitimate interests in the domain names within the meaning of Policy ¶ 4(a)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003).
Complainant has shown that Respondent registered the disputed domain names primarily to divert Internet users seeking Complainant’s business to Respondent’s website to promote its competing services. The record shows the parties compete in the same market. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 23, 2006).
In sum, the Panel finds Respondent is taking advantage of the confusing similarity between the disputed domain names and Complainant’s marks to profit from the goodwill associated with Complainant’s marks. This conduct violates Policy ¶ 4(a)(iii). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insidehigheredjob.com>, <insidehigheredjobs.com>, <higheredjob.org>, and <insidehigheredjobs.info> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: July 31, 2007
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