ROC Recruitment Ltd v. Lost in Space, SA
Claim Number: FA0205000114408
Complainant is ROC Recruitment Ltd, London, UNITED KINGDOM (“Complainant”) represented by Stephen Burke. Respondent is Lost in Space, SA, Majorca, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rocrecruitment.com>, registered with Intercosmos Media Group Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 23, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.
On May 23, 2002, Intercosmos Media Group Inc confirmed by e-mail to the Forum that the domain name <rocrecruitment.com> is registered with Intercosmos Media Group Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group 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 May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002, 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.
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 July 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent’s <rocrecruitment.com> domain name is identical to Complainant’s ROC RECRUITMENT common law mark.
2. Respondent has no rights or legitimate interests in the <rocrecruitment.com> domain name.
3. Respondent registered and used <rocrecruitment.com> in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant operates a secretarial recruitment company based in London, England. Established in June 1991, Complainant provides secretarial recruitment services for both permanent and temporary positions to companies and organizations of various sizes throughout the United Kingdom. Complainant’s ROC RECRUITMENT mark is advertised extensively both in the London press and nationally throughout the UK, and on the worldwide web. Complainant has acquired a solid reputation for delivering first class services.
Respondent registered the disputed domain name on January 26, 2002. Complainant’s investigation revealed that Respondent’s disputed domain name resolves to a website that advertises “the hiring of escorts, the provision of personal services, temptations at work, sexetaries. . .and sexually provocative photographs.” Upon contact, Respondent offered to sell the disputed name to Complainant for $2,000, an amount that soon increased to $2,500. Complainant’s investigation also revealed that Respondent is located at the same address in the British Virgin Islands with the same listed representative, Helen Bradbury, as the habitual domain name infringer, Telmex Management Services, Inc. Respondent has a history of registering famous marks, such as <cspantv.com> and <themarriotthotel.com>.
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 to 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 established common law rights in the ROC RECRUITMENT mark. Complainant has developed its ROC RECRUITMENT mark in the United Kingdom by extensively advertising its secretarial recruitment services over the past eleven years. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <rocrecruitment.com> domain name is identical to Complainant’s ROC RECRUITMENT mark since spaces are disallowed in second level domain names. Respondent’s disputed domain name reflects Complainant’s mark in its entirety, in spelling and form. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response in this proceeding and the Panel may presume Respondent has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed accurate and 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”).
Complainant specializes in providing secretarial recruitment services and Respondent trades on Complainant’s mark by using its domain name to advertise “sexetaries” and “temptations at work.” Respondent’s association with Complainant’s business is further illustrated by the advertisement “Blonde in London over 250 Pics on My Site,” which is displayed on Respondent’s website even though Respondent is allegedly located in Spain. Respondent’s opportunistic attempts to trade on the goodwill associated with Complainant’s ROC RECRUITMENT mark is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
No evidence suggests that Respondent is commonly known as “ROCRECRUITMENT” or <rocrecruitment.com> and Respondent has not shown that it is commonly known as “ROCRECRUITMENT” or <rocrecruitment.com>, pursuant to Policy ¶ 4(c)(ii). This Panel knows Respondent only as Lost in Space or Telmex. Accepting Complainant’s allegations as true, Respondent is not licensed or authorized by Complainant to use the ROC RECRUITMENT mark in connection with adult escort services. Thus, Respondent has failed to demonstrate its rights to and legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated in the Findings, after Complainant initiated contact with Respondent, Respondent offered to sell the disputed domain name for $2,500. Respondent noted that it would be less expensive for Complainant to buy the domain name than to seek redress through arbitration. Thus, Respondent registered and used the disputed domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of out-of-pocket expenses. Therefore, Respondent’s actions evidence bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where Respondent offered to sell the domain name for $900, specifically noting that it would cost Complainant more to enforce its rights legally than to succumb to Respondent's attempted extortion).
Complainant’s investigation reveals that Respondent has previously engaged in a similar bad faith pattern of registering infringing domain names. Respondent’s intentional registration of a preexisting common law mark is bad faith under Policy ¶ 4(b)(ii) because Respondent is preventing Complainant, the owner of the mark, from reflecting ROC RECRUITMENT in a corresponding domain name. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Lastly, Respondent has used Complainant’s mark to attract Internet users to its adult website by opportunistically trading on the goodwill associated with Complainant’s ROC RECRUITMENT mark. Respondent’s registration and use of the domain name for commercial gain is bad faith under Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <rocrecruitment.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 16, 2002.
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