StaffEx Corporation v. Amit Pamecha
Claim Number: FA0707001029545
Complainant is StaffEx Corporation (“Complainant”), represented by Michael
R. Abejuela, of Clark & Associates Attorneys at Law,
P.C., Market Station,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staffex.com> (the “Domain Name”), registered with Go Daddy Software, 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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2007.
On July 9, 2007, Go Daddy Software, Inc. (“Go Daddy”) confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Go Daddy and that the Respondent is the current registrant. Go Daddy has verified that Respondent is bound by the Go Daddy 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 July 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 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 by e-mail.
A timely Response was received and determined to be complete on August 6, 2007.
Complainant submitted a timely Additional Submission on August 13, 2007, in accordance with NAF’s Supplemental Rule 7. Respondent also filed an Additional Submission, which was received in a timely manner according to the same Supplemental Rule.
On August 10, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant is a
Complainant explains that it has registered multiple domain names bearing the “staffex” and “staffx” names, and currently conducts business through the <staffex.net> domain name. However, Complainant has been unable to register the Domain Name because it was already registered by Respondent on June 25, 1999.
Complainant contends that the registration and use of the Domain Name is in bad faith, creates a likelihood of confusion with Complainant’s STAFFEX trademark, and was done primarily for the purpose of selling the Domain Name for valuable consideration in excess of Respondent’s out-of-pocket costs related to the Domain Name, and with the intent of preventing Complainant from reflecting its mark in a corresponding domain name. Complainant’s detailed arguments are as follows.
Complainant contends that the Domain Name is identical to its STAFFEX trademark, except for the “.com” extension. Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the name Staffex, and has no affiliation or ties with Complainant.
Complainant alleges that the registration and use of the Domain Name has been in bad faith because the Domain Name was registered for 8 years without any active or commercial use. Respondent has never operated any bona fide business using the Domain Name nor made any non-commercial or fair use of it. Instead, Respondent has passively held the Domain Name for 8 years since its registration in June 1999. There has never been an active website displayed in connection with the Domain Name, and it currently resolves to a web page providing links to sites of companies offering products and services in competition with, or related to, Complainant’s offerings, which may confuse Internet users into believing that the linked sites are affiliated with or endorsed by Complainant. This passive holding for such a long period leads to an inference of registration and use in bad faith.
Complainant contacted Respondent by e-mail in October 2004 with a request to purchase the Domain Name. When Respondent inquired about an offer price, Complainant stated $300.00, but Respondent responded with the price of $300,000.00, which is an amount well above Respondent’s out-of-pocket costs for registration of the Domain Name. Complainant argues that it is logical to conclude the passive holding of the Domain Name is motivated by a desire for profit in an exorbitant amount, well in excess of Respondent’s out-of-pocket expenses. This is evidenced by Respondent’s unreasonable asking price, which shows Respondent’s bad faith intent.
This is also compounded by the fact that the Domain Name infringes on Complainant’s STAFFEX trademark, especially since the Domain Name is virtually identical to the mark and resolves to a page exhibiting links to sites that most likely compete with, or at the very least, are in the same industry as Complainant.
Finally, Complainant emphasizes that Respondent renewed the registration for the Domain Name in 2005, and transferred the registration from Register.com to GoDaddy.com in 2006, clearly with knowledge that Complainant was seeking a Federal trademark registration, as was clarified by Complainant in the e-mail correspondence with Respondent while negotiating a purchase price.
Respondent has responded, emphasizing that it registered the Domain Name several years prior to Complainant’s registration of (i) its Federal trademark, and (ii) its <staffex.net> domain name. Respondent argues that Complainant had no legal existence prior to 2004, nor did it own any trademarks or register its <staffex.net> domain name prior to this time. Instead, Complainant registered the <staffex.net> domain name some 5 years after Respondent’s registration of the Domain Name in June 1999.
Respondent states that it chose the word “Staffex” for launch of a start-up business focused on creating a staffing exchange on the Internet, after conducting extensive due diligence. In this respect, Respondent states that a search done in 1999 did not show any trademarks registered under that name, nor did it yield any results on Internet search engines. Respondent claims he is a serial software entrepreneur who has launched several successful organizations (without naming them), and he invested significant time conceptualizing the business for <staffex.com> and seeking to raise funds.
Respondent seeks to discredit Complainant’s evidence, asserting that
Complainant is trying to prove common law rights “based on a couple of invoices,”
and that Complainant has “failed to provide any concrete evidence that cannot
be doctored.” Respondent argues that Complainant
has also failed to provide evidence to prove a legal relationship between
Soochna Resources, Inc, a
Respondent claims that in the e-mail exchanges between the parties, it actually asked Complainant if Complainant was interested in acquiring the business assets of <staffex.com>, but Complainant showed no interest.
Finally, Respondent argues that any content on the <staffex.com> site is not its responsibility because that content is controlled by the registrar, Go Daddy. Respondent claims that it has neither endorsed Go Daddy’s conduct nor financially benefited – “the Respondent has not received any kind of monies or financial rewards or any other monetary compensation for any Click-through on the site.” Respondent suggests that Complainant should bring legal action against Go Daddy if it wishes.
B. Additional Submissions
Complainant: Complainant’s Additional Submission reiterates many of the arguments made in the Complaint. Complainant re-emphasizes that it first used its STAFFEX mark in commerce as early as February 12, 1996, prior to Respondent’s registration of the Domain Name. Complainant explains that it used STAFFEX as an identifier for its product and services even though it did not change its company name to Staffex Corporation until 2004. Complainant emphasizes that common law trademark rights are recognized under the UDRP, even in the absence of registered rights, and such common law rights accrued to Complainant because it used STAFFEX in commerce as an identifier of its product/services.
Complainant contends that Respondent’s registration of the Domain Name with the word “Staffex” – which is not a commonly known word – likely originated from Complainant, since this name was already being used by Complainant in the staffing industry where Respondent states it was focusing.
Complainant maintains that Respondent has attacked the credibility of Complainant’s evidentiary submissions without any basis. While Complainant states these attacks are unjustified, it then asserts similar challenges against the evidence provided by Respondent. For example, Complainant asserts that it is dubious Respondent was involved in the start-up of a business associated with the Domain Name, since the Domain Name has remained inactive for over 8 years. Further, Complainant argues that Respondent has provided no evidence in support of its assertion that Respondent conducted searches prior to registering the Domain Name in 1999. Even if the searches were conducted, they were not necessarily comprehensive. Complainant asserts it is likely that if Respondent did conduct adequate due diligence, it probably learned of Complainant’s STAFFEX mark, as noted above, which resulted in the bad faith registration of the Domain Name.
Complainant has provided evidence to show that StaffEx Corporation is
the legal successor to Soochna Resources, Inc. – Complainant StaffEx was
continued / domesticated from the company Soochna Resources in
Complainant explains that, with regard to the e-mail exchange between the parties, it was only after Respondent quoted the price of $300,000 for the Domain Name that Respondent then in a subsequent e-mail referenced a sale of business assets. Complainant argues that, on information and belief, there was no business known as “StaffEx.com,” so there would have been no business assets to purchase apart from the Domain Name itself.
Complainant argues that as to the current content associated with the Domain Name, which includes click-through links to sites offering confusingly similar goods and services, Respondent should be considered responsible as owner of the Domain Name registration.
Finally, Complainant argues that it operates a full business under the STAFFEX mark and has a robust website and operation. Respondent’s bad faith registration and passive holding of the Domain Name detracts from the Complainant’s business and prevents Complainant from providing information and services through the Domain Name.
Respondent: Respondent’s Additional Submission emphasizes again that Complainant has supplied inadequate evidence of trade show materials, advertisements, yellow page listings, etc., to demonstrate that the mark STAFFEX was being used extensively by Complainant prior to 1999 when Respondent registered the Domain Name. Respondent challenges whether Complainant had acquired any common law trademark rights at that early time. Respondent claims that it registered the Domain Name “based on its own ideas and intellectual capital and not based on bad faith.”
Respondent contends that the asking price of $300,000 was in conjunction with the business assets of Staffex.com, not simply for the Domain Name. Respondent again asserts that it is not in the business of buying and selling domains, and has never received a single penny from any searches conducted on the web pages parked by registrars in connection with the Domain Name. Instead, one of the key reasons for the retention of the Domain Name is because it is part of the business originally conceived and developed by Respondent. As to allegations that Respondent fabricated its evidence in support of the Staffex.com business, Respondent claims that there were other individuals involved and “any court of law or other authorized authority is free to record a legal disposition from different parties and verify the validity of the presentation,” which was attached to Respondent’s Response.
Complainant is a
Respondent is an individual who registered the Domain Name in June 1999.
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.
The Panelist finds that Complainant has
rights in the trademark STAFFEX, which is identical to the Domain Name. Complainant’s
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant has alleged that Respondent is not commonly known by the Domain Name because the WHOIS information lists Respondent as “Amit Pamecha.” Complainant further states that Amit Pamecha has no affiliation or ties with Complainant. Complainant alleges that Respondent has never made any use of the Domain Name since it was registered in June 1999, and never developed a website that resolves from the Domain Name. Complainant submitted evidence to indicate that the Domain Name resolves, instead, to a site which displays hyperlinks, some of which lead to the websites of Complainant’s competitors.
The Panel finds that the listing of a web page with hyperlinks to services
that compete with Complainant does not constitute a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Jerry Damson, Inc. v.
As a separate point, Respondent has alleged in response that it registered the Domain Name in order to launch a web-based company that would create a staffing exchange on the Internet. Respondent thus claims that it has rights or legitimate interests in respect of the Domain Name, and Respondent has submitted evidence to demonstrate its intentions to use the Domain Name in this regard. This is evidence which Complainant has challenged, just as Respondent challenged the evidence submitted by Complainant in support of its claims, such as having common law rights in the STAFFEX mark dating back to 1996. Here, the Panel observes that both parties have sought, without foundation, to discredit the evidence submitted by the other party. Both have raised speculative notions that such evidence could have been falsified or “doctored.”
The Panel makes no evidentiary findings as to the authenticity of certain evidentiary documents provided by the parties, in particular, those submitted by Complainant relating to early use of the STAFFEX mark and the documents showing purported business planning by Respondent. The UDRP is ill-suited to resolve such evidentiary issues. The Panelist also makes no finding as to whether Complainant has proven that Respondent has no rights or legitimate interests in respect of the Domain Name, instead determining that this case should be decided based on the element considered below.
In the face of allegations of bad faith registration and use of the Domain Name, Respondent has alleged that it did not have any knowledge of Complainant or its STAFFEX mark when it registered the Domain Name in June 1999. Respondent claimed, in this respect, that it conducted extensive due diligence prior to registering the Domain Name, yet found no notice of Complainant or its mark. The Panelist makes no finding as to the truth or adequacy of such claimed due diligence. Complainant changed its company name to “Staffex Corporation,” and developed a website that resolved from the <staffex.net> domain name in 2004, which was five years after Respondent registered the Domain Name. Prior to this time, there is no sufficient evidence that Complainant’s trademark had become well-known through widespread use, even if some common law rights may have arisen. The most Complainant has been able to allege in this regard is that it is likely Respondent learned of Complainant’s STAFFEX mark, but there is simply no substantial evidence to show that this would be the case. Even if Complainant had acquired some common law rights by 1999, there is no evidence that Respondent had any knowledge of Complainant, and no evidence that Respondent had an intent to register the Domain Name in order to target Complainant or its business.
Therefore, while the current use of the Domain Name, which is identical
to Complainant’s mark, could very well amount to trademark infringement under
federal law, in this UDRP case the Panelist must focus on whether there was bad
faith registration and use. The Panelist is unimpressed with the
groundless accusations made by Respondent to discredit Complainant’s evidence. In certain respects, this only caused the
Panelist to question the candor of Respondent.
In addition, the Panelist does not condone the current use of the Domain
Name as it resolves to a parking website – this could lead to a finding of bad
faith current use. Nevertheless, the Panelist finds there is
insufficient evidence to show that Respondent registered the Domain Name, in June 1999,
in bad faith. Moreover, the Panelist, as
noted above, is unwilling to rule that either party’s evidentiary submissions
are falsified or otherwise doctored. See
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Christopher Gibson, Panelist
Dated: August 27, 2007
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