ROC Recruitment Ltd v. Lost in Space, SA
Claim Number: FA0205000114408
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@rocrecruitment.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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>.
DISCUSSION
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.
DECISION
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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