National Arbitration Forum
ChildCare Careers, LLC v. Nokta Internet Technologies
Claim Number: FA0803001163699
Complainant is ChildCare Careers, LLC (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <childcarecareers.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Diane Cabell, Hon. Tyrus R. Atkinson, Jr., Hon. Timothy D. O’Leary as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2008.
On March 17, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <childcarecareers.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 14, 2008.
A timely Additional Submission was received from Complainant and determined to be complete on April 16, 2008.
A timely Additional Submission was received from Respondent and determined to be complete on April 21, 2008.
On April 28, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Hon. Tyrus R. Atkinson, Jr., Hon. Timothy D. O’Leary as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name is identical to a service mark in which Complainant has rights. ChildCare Careers is a full service employment/staffing agency in the child care field. For over fifteen years, ChildCare Careers has been the source for temporary & permanent professionals for child care facilities and after-school programs.
Respondent has registered the domain name <childcarecareers.com> utilizing the service mark owned by Complainant. Obviously, Respondent’s domain is identical to Complainant’s mark and is therefore likely to cause confusion. Complainant has been using the name “ChildCare Careers” since 1998 and registered as a service mark on March 16, 2006. Respondent registered the domain name <childcarecareers.com> after Complainant had established common law rights in the mark, ChildCare Careers.
It appears that Respondent who acts under anonymity does not use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
It appears that Respondent (as an individual, business, or other organization) has not been commonly known by the domain name before taking over the domain.
Respondent is not commonly known by the domain name in dispute, has a history of registering other confusingly similar domain names for financial gain (see attached decisions) and has no rights or legitimate interests in the <childcarecareers.com> domain.
Nothing found in a Google search indicates that Respondent is commonly known by the name <childcarecareers.com>. It is obvious that this is done for the purpose of deriving commercial gain. Commercial use of a domain name which is so inherently likely to lead to confusion of Internet users cannot constitute a bona fide offering of goods or services, nor can it constitute a legitimate non-commercial or fair use of a domain name
Complainant asserts rights in <childcarecareers.com> based on a
Furthermore, the registry excerpt provided by Complainant does not show that Complainant is the owner of the service mark. It is registered to “A&H Enterprises, Inc.” Complainant has not given any explanation as to why the mark is not registered to Childcare Careers LLC. The evidence in fact shows that Complainant could not be the owner, and should not be treated as having any interest in the asserted service mark registration. In fact, at the time of registration (March 2006), Complainant did not even exist. California Secretary of State Business Search shows that the limited liability company Childcare Careers was formed in May 2007.
The description of services submitted by Complainant in the certificate of registration is “Provision of temporary and permanent staff to child care providers and educational institutions.” Given the description of services, it is extremely unlikely that a non-automated registration agency, such as the USPTO, would have allowed registration of the asserted mark at all. The phrase “childcare careers” is entirely and inherently descriptive and does nothing more than describe the services offered by Complainant and millions of others. Furthermore, the specimen submitted by Complainant, and Complainant’s current use of the mark on its webpage suggests that it is actually the diamond image with the three C’s that is the dominating element and not the descriptive phrase “childcare careers.” This element is not reproduced in the Domain Name.
CHILDCARE CAREERS was
registered in March 2006. Complainant is
not the registrant on the certificate and has provided no evidence indicating
it holds any rights or interests in the asserted mark. Although the registration certificate claims a
first use date of 1998, such a claim is a bald statement and cannot be evidence
of actual use or common law right. Complainant did not exist until 2007 and thus
could not have used the mark previously. The fact that an asserted first-use date is
referenced in an “official” document issued by the State of
Respondent argues that to establish common law rights in the terms, Complainant must establish secondary meaning. That is to say that the phrase has become recognized by the public as an indicator of source for Complainant’s goods and services.
Respondent argues that secondary meaning requires strong proof of exclusive use and extensive recognition. Secondary meaning exists only if in the minds of the public, the primary significance of a product feature or term is to identify the producer and not the product. (Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)). Secondary meaning is the consumers’ association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. Universal City Studios, Inc. v. Burns & Adam-12 Dot Com, D2001-0784 (WIPO Oct. 1, 2001).
Here, Complainant provides no evidence that it holds any rights in the asserted mark under common law. None of the evidence required by the above authorities has been provided or even alleged. Simply stated, there is nothing to indicate that the descriptive phrase CHILDCARE CAREERS should in any way be exclusively associated with Complainant. On the contrary, the terms used are common and descriptive dictionary words. A simple Google search reveals worldwide use of the terms in over 125 MILLION page results, virtually all of which are unrelated to Complainant.
The burden of proof is on Complainant to prove absence of rights or a legitimate interest.
Policy 4(c)(i) provides an absolute defense to Respondent. Since 2003, Respondent has consistently used the Domain Name to provide information, links, advertising, and other content related to a career in childcare. As such, it pre-dates any notice of Complainant and/or its asserted claims.
The mark in which Complainant asserts rights is clearly generic and/or descriptive. “CHILDCARE” and “CAREERS” are both dictionary words. The combination of the terms is not distinctive (and certainly not fanciful), rather, it is simply a descriptive phrase for the services offered by Complainant and millions of others. As for Complainant, its own descriptive use is evidenced by the specimen it supplied in connection with its California service mark application (“If you are looking for unique opportunities in the child care field, come work for Childcare Careers, the largest staffing agency dedicated to the child care field”)
The terms are being used by Respondent in relation to the subject matter of which they are descriptive. Respondent’s use is widely duplicated by millions of others in the Internet. Evidence of the widespread and descriptive use of the terms includes the following:
is not required to show a “superior” right. Respondent need only show “a right
or legitimate interest;” one is sufficient (Policy 4(c)(ii). Respondent need only show that he has “a”
legitimate right or interest - which is what he has done. Respondent does not need to show that his rights or legitimate
interests are better (however measured) than those of Complainant.
Respondent had no knowledge of Complainant or its asserted rights at the time it registered the Domain Name. This is logical inasmuch as Complainant did not exist and held no registered or common law mark when the Domain Name was registered. Respondent registered the Domain Name because it was a good descriptive phrase and its use is, and has always been, consistent with that purpose. Respondent indeed is using the Domain Name in a bona fide and legitimate manner.
Respondent has no intention to be known by the domain name, per se. Nor is this required in the UDRP Policy. Being commonly known by the Domain Name is a defense to a UDRP. The Domain is used in the generic/descriptive sense for Direct Navigation purposes and not as having any trademark value.
There is no evidence of actual or even potential confusion. There is nothing in the nature of the descriptive terms “childcare careers” that would lead any reasonable Internet user to conclude that the term is (or has ever been) associated only (or even primarily) with Complainant as opposed to its obviously descriptive context. Complainant only has itself to blame for choosing a generic service mark that is not capable of distinguishing Complainant as the provider of specific services. While Complainant may have a business desire to obtain the Domain Name, the UDRP does not support such a goal.
Contrary to Complainant’s bald assertion, the mere commercial use of the Domain Name does not mean that Respondent has no rights or legitimate interest. The very intent is to use the Domain Name commercially in a manner consistent with its meaning. The Domain Name is used in a manner that is clearly and unambiguously associated with the meaning of the phrase “childcare careers.” Respondent requires no permission, consent or license from Complainant. Nor does Respondent act under anonymity - its name is clearly associated with the Domain and the information provided in the WHOIS records is and remains accurate in all respects. Commercial or not, this constitutes a “fair” use in every sense of the word.
Complainant must also prove that the Domain Name was both (a) registered in bad faith, and (b) used in bad faith. (Policy 4(a)(iii)). Complainant has not addressed bad faith on behalf of Respondent.
Respondent registered the Domain in an open and
transparent manner. Complainant was free to have done so but didn’t. In fact,
Complainant chose to register other domain names but made no apparent effort to
even though it was available for registration in 2003. Nor did Complainant ever attempt to make
itself known to Respondent, a fact that can be seen as evidence of Complainant’s
lack of faith in its own mark and any rights thereto. Respondent could not have known since there
is no online search capability to find out if any entity holds a
The Domain Name is descriptive and has been consistently used in its descriptive sense.
Complainant has alleged that Respondent has a history of registering confusingly similar domain names for commercial gain. Allegations of patterns of conduct are only 1 of a 2-part test under Policy 4(b)(iv) and are only relevant if Complainant also proves that Respondent registered the Domain Name so as to prevent Complainant from reflecting its service mark in a domain name.
The Domain Name was registered in May 2003. This was 4
years before Complainant existed and 3 years before the asserted mark was
Nor did Respondent register or use the Domain Name in any effort to create confusion. Complainant cannot claim rights in its asserted mark sufficient for the purposes of the Policy. As such, there can be no actual confusion on behalf of consumers, and more importantly, Complainant has not submitted any evidence whatsoever supporting actual or even potential confusion.
UDRPs must be brought in good faith (UDRP Rules, Rule 1). If the Panel finds that a complaint is brought in bad faith, the Rules obligate the Panel to make such a finding part of its decision (UDRP Rule 15(e)). Reverse Domain Name Hijacking (“RDNH”) is only one example of bad faith. (Id). A finding of abuse is appropriate when a complainant has used the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. (UDRP Rules, Rule 1). Bad faith is present where a complainant pursued a complaint that it knew to be unsupportable, or filed a complaint with reckless disregard as to whether its allegations are supportable.
Complainant chose to initiate time-consuming and costly UDRP proceedings without even attempting to establish its rights in an asserted mark, ignoring Respondent’s clear legitimate interest in the Domain Name, and without even addressing the required element of bad faith. Respondent was forced to retain legal counsel and spend funds to point out the obvious deficiencies that Complainant could easily have seen itself.
Complainant could only have hoped Respondent would default. This is all the more reason to issue a RDNH ruling as but for the response, it is entirely possible that a panelist, having limited time, may have relied upon the bald allegations of Complainant and not uncovered the facts established by Respondent herein.
Complainant has submitted no evidence that could support any of the three (3) elements required by the Policy. In fact, Complainant has not even bothered to address all elements. The Complaint consists of only bald allegations and must be rejected.
Respondent points out that the “ChildCare Careers” service mark registration is not in the name of Complainant. Supporting exhibits will clarify and prove that ChildCare Careers, LLC does in fact own the rights to the “ChildCare Careers” service mark.
A&H Enterprises was doing business as ChildCare Careers and solely as ChildCare Careers since its inception (as Hulya Enterprises Inc.) on September 20, 1996. As the new owner of the “ChildCare Careers” trade name and service mark, the earliest evidence we have of marketing materials documenting common law usage of “ChildCare Careers” is a customer flyer dated December 6, 1999.
As further supporting evidence of the fact that ChildCare Careers, LLC does indeed hold a common law service mark of “ChildCare Careers” Complainant submits (in part) the following:
A&H Enterprises and ChildCare Careers, LLC spent a combined total of $165,759 on advertising and marketing expenses in 2007 (not counting employee costs) and 100% of it was under the name ChildCare Careers. See attached financial statements (Exhibit 8). For earlier years advertising and marketing expenses were: 2006: $146,363; 2005: $127,167; 2004: $51,349; 2003: $37,747.
We have been soliciting temporary child care workers under the name “ChildCare Careers” since at least Sep 10, 1999.
Over 1,700 individual child care centers have used our services, all of whom know us as “ChildCare Careers.”
As far as we are aware, we are by far the largest staffing
firm focused on the child care field in the
No additional submission on rights or legitimate interests.
Complainant denominates this submission under the heading “Supposition of Bad Faith.”
Complainant asserts that Respondent acted in bad faith based on what it knew of the history between Hulya Enterprises Inc. and Teachers’ Connection. Hulya Koc, the founder of Hulya Enterprises, had actually co-founded Teachers’ Connection with Emmie Malazgirt in 1989. After a bitter disagreement in 1996, the two partners went their separate ways with Hulya Koc founding Hulya Enterprises Inc. d/b/a ChildCare Careers on September 20, 1996. Teachers’ Connection was then and remains now a direct competitor to ChildCare Careers. On March 2, 1998 Teachers’ Connection registered the <childcarecareers.com> name even though they were not conducting business under that name. Ms. Hulya Koc, claims that Teachers’ Connection did so out of spite to prevent her from obtaining the domain. On June 25, 1999, Ms. Koc registered the domain <childcarecareers.net> as a second best alternative.
Not being very internet savvy, Ms. Koc had no idea that Teachers’ Connection had failed to renew their registration, or even that renewal was required, or that the registration could have lapsed and been acquired by another company. She presumed that Teachers’ Connection still held the registration. Had she known, she would have registered <childcarecareers.com> for herself. She also did not know that she could appeal to the National Arbitration Forum. When WHOIS revealed that the holder of the registration was Nokta, she assumed that they were just some intermediary that Teachers’ Connection was using.
Our suspicions were raised further when a Google search
revealed that Respondent was headquartered in
Even if it turns out that there is no connection between Ms. Malazgirt and Respondent, and that it is just a coincidence they are both Turkish, Complainant still believes that the domain should be transferred to ChildCare Careers, LLC based on the following relevant facts:
The domain was registered by a competitor, Teachers’ Connection, when Ms. Koc registered the <childcarecareers.net> domain.
Respondent does not use the domain in connection with a bona fide offering of goods or services, they merely use the domain to collect revenue from posting Google paid search advertisements.
Respondent is not commonly known by the domain name in dispute, whereas Complainant is.
Respondent has a history of registering other confusingly similar domain names for financial gain.
As a preliminary matter, Respondent contends that the Panel should not permit Complainant to file a Supplementary Submission because this pleading is not supplemental at all, but rather an effort to meet the many deficiencies of the Complaint as pointed out by Respondent. Respondent argues that if the Panel does not consider this pleading, Complainant has not proved Complainant’s case on any of the three necessary elements required by the Rules.
The Panel agrees that there are significant problems with the Complaint. However, in the interests of allowing each party a fair opportunity to present its case, we exercise our discretion in the matter and accept Complainant’s Supplemental Submission and the Supplemental Response filed by Respondent.
The additional evidence submitted by Complainant in its supplemental pleading is not sufficient to establish the required rights.
Respondent makes a number of observations concerning the deficiencies in the Exhibits provided by Complainant. They are (in part):
Exhibit 1 is a copy of the articles of incorporation of Hulya Enterprises and a copy of the minutes from the first board of directors meeting. Hulya is a third party and the exhibit is not a business record of Complainant. The evidence (not certified) is said to show that Hulya Enterprises was incorporated and began doing business as ChildCare Careers in September 1996. There is however no mentioning whatsoever of “Childcare Careers” or anything thereto related. The exhibit does not show that the company was doing business under any other name than that registered with the Secretary of State.
Exhibit 2 is a copy of a Fictitious Business Name Statement filed in October 2002 for registration of the name “ChildCare Careers.” There is however no copy of an affidavit of publication (required by law). In the absence of such, one would at least expect Complainant to provide an excerpt from a registry or similar to show that the name was in fact registered. Finally, exhibit 2 was merely filed on the county level and assuming it was published, was published in a newspaper limited to that county. There is no public database by which any such filing could even be located.
Exhibit 5 is a copy of an Asset Purchase Agreement, said to prove Complainant to be the actual owner of the service mark. However, “Schedule 3.12 Intangible Property and Computer Software,” referenced in the agreement, has been excluded. Without this schedule it is impossible to know what relevant assets were transferred to Complainant. What is more, the service mark register continues to list A&H Enterprises as the actual registrant. In a contest between an unsupported allegation by Complainant in an uncertified supplemental filing and the official records of the California Secretary of State, the great weight of credibility favors the official state records.
It is apparently not until March 2006 that the asserted service mark CHILDCARE CAREERS is registered. The evidence submitted (CE2) was analyzed in Respondent’s Response, but it is repeated that a) it is registered to a company different from Complainant, b) the mark is a figurative mark, no exclusive rights in the descriptive phrase “childcare careers” exist, c) the mark was registered three years after the Domain Name, and d) there is no pre-registration publication process or known online database that can be referenced to even know if a trademark right is claimed. It is also repeated that a state registration is not evidence of a mark’s distinctiveness.
Respondent maintains that the above shows that, despite the new evidence submitted, there is no established link between the asserted service mark registration and Complainant ChildCare Careers LLC. Even if such a link would exist, the service mark was not registered until three years after the Domain Name. At the time of registration of the Domain Name, Complainant held no rights in a mark through registration.
The evidence submitted by Complainant to show common law service mark rights consists of uncertified documents and statements. Each piece of evidence is discussed below:
Exhibit 6. Complainant submits a customer contract dated September 1996 as evidence of common law rights prior to 2003. The company was apparently formed about two months earlier (CSF Ex I). It is difficult to believe that the company would have acquired any significant recognition during those two months, and under any circumstances, ONE customer contract does little to prove it. No other contracts are provided. The contract is not in the name of Complainant and could not have been assigned by way of CSF, Exhibit 5.
Asserted Revenues. The CSF presents revenues claimed to be generated under the mark CHILDCARE CAREERS between the years 2000 and 2007. There is no indication of the number of customers. When revenues are proffered to show secondary meaning, there is obviously a great difference between revenues earned from one customer vs. revenues earned from thousands.
Exhibit 8 are financial statements, indicating marketing expenses from 2003 to 2007. As these numbers (if at all reliable, they are not certified in any way) do not go further back than 2003, they say nothing about any rights claimed prior to registration of the Domain or of the recognition required to establish secondary meaning in a generic term.
Finally, Complainant believes itself to be the largest childcare staffing firm in the world; over 1,700 individual childcare centers have used their services. These assertions are not supported by any evidence. Even if true they cannot support an exclusive right to use the phrase “childcare careers” which a common Google search shows holds over 125 MILLION descriptive uses for the terms.
Respondent argues that a trademark is a source indicator. A mark must be distinctive for the goods and services offered to be afforded trademark status. Under common law principles, trademark status can be acquired through use of a mark, if the mark through such use becomes a distinctive identifier associated with the owner or its goods and services. Common law trademark rights require evidence of exclusive use and exclusive association. A generic or descriptive mark can never be a source indicator. A generic or descriptive mark cannot be used as a trademark and cannot acquire trademark status.
Respondent contends that the submitted evidence does not show customer understanding or acceptance of the terms CHILDCARE CAREERS as a source indicator for the goods or services provided by Complainant. Nothing indicates that, in the mind of consumers, “childcare careers” should be exclusively associated with Complainant. There are no consumer surveys or similar to support such a claim. The uncertified statements of revenues and marketing expenses do not prove recognition by consumers. There is no evidence that anyone has actually seen the advertisements, flyers or newsletters distributed, or took any action on the basis thereof.
Complainant has failed to show that it holds or has ever held any common law trademark rights.
Respondent’s use of the Domain Name was discussed in the Response. As already discussed in the Response, numerous WIPO and NAF decisions confirm the bona fide nature of the business model used by Respondent. Respondent’s use of its systems and business models in connection with this descriptive phrase is completely legitimate and ample precedent authority has been provided. The legitimacy is all the more apparent because (a) Respondent registered the Domain Name before any service mark existed, (b) there is no evidence that Complainant held a common law trademark in which it showed secondary meaning, and (c) the phrase is descriptive and is being used in a manner consistent with that descriptive nature. There is no reasonable manner Respondent could have discovered Complainant’s asserted rights and the phrase was then (and is now) descriptive. The information provided does not target Complainant but rather provides searches relevant to careers in childcare in general.
Complainant repeats that Respondent is not commonly known by the Domain Name. This argument has already been met in the Response and Complainant gives no further explanation as to why such fame or recognition should be at all relevant, even less so necessary. Respondent’s link to the Domain is widely published in a globally accessible database. This link has been far more widely publicized than Complainant’s attempt to piggy-back on the merely alleged publication by Hulya. Complainant’s claim to be known by the name is here of little importance. As previously noted in the Response, this is not an issue of who has “superior rights.” Respondent has a clear legitimate interest in the Domain Name and need not in addition be commonly known under same.
Finally, Complainant states that Respondent has a history of registering confusingly similar domain names for financial gain. This argument was also met in the Response and Complainant has not included any new arguments or evidence in its supplemental filing. What was stated in the Response is therefore incorporated here by reference.
Again, Complainant has failed to address the issue of bad faith. However, in case Complainant’s bald assertion that Respondent has a history of registering confusingly similar domains is an accusation of bad faith, it is repeated that a finding of bad faith in accordance with Policy 4(b)(ii) requires two things; a) evidence of the required intent to prevent a trademark owner from reflecting the mark in a corresponding domain name, and b) evidence of a pattern of such conduct.
Complainant has not submitted any evidence of the required intent. Respondent did not register the Domain to preclude Complainant from doing so. Complainant ChildCare Careers LLC did not even exist at the time the Domain Name was registered and consequently nor could any such required intent. Until receipt of the Complaint, Respondent had no knowledge of Complainant or its claimed rights. Complainant has presented no evidence that it held a mark at the time or that its asserted mark had gained secondary meaning. Complainant has a pre-existing domain and has apparently been satisfied with it for over ten years.
Complainant implies that Respondent should somehow be
connected with Complainant’s former business partner and thereby have acquired
the domain name in a bad faith manner. The assumption is based on the facts
that Respondent is headquartered in
Respondent has no knowledge of, nor interest in, Complainant’s
internal affairs. Respondent does not know Ms. Malazgirt and there is no reason
to link Respondent with her or any of the other over 70 million residents of
Respondent cannot be blamed for Complainant’s mistake not to register the generic Domain Name in time. Again, Complainant has a domain name and has happily used it without any apparent problems or confusion. Hulya allowed the former registrant to hold the Domain for four years and has apparently happily used its own domain <childcarecareers.net> for a long time. Complainant’s being unfamiliar with the Internet and domain name registrations is unfortunate but no concern of Respondent’s, or the UDRP mechanism for that matter.
While Complainant may now covet Respondent’s Domain Name for economic reasons, such a purpose is not supported by the UDRP Policy or Rules. That Complainant (or its alleged predecessors) selected a common generic phrase as a business moniker is an issue for Complainant alone. While such a moniker may prove useful in business (e.g. <cars.com> for selling automobiles) the law is very clear that such use is not a trademark and gives no legal rights to preclude others from using the exact same phrase for a similar (or even identical) purpose.
Respondent contends that whatever erroneous assumptions Complainant has made, and apparently, continues to make, does not warrant a finding in favor of Complainant. Complainant has not proven any of the three UDRP elements. It filed a Complaint that was obviously deficient; something Complainant at least should have been aware of, and it is now confirmed in its supplemental filing that “certain critical issues” needed “clarification”. “Critical” indeed. Respondent respectfully requests that the Complaint be denied, the Supplemental filing rejected, and that the Panel issue a finding that Complainant has engaged in reverse domain name hijacking.
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.
The Panel finds that Complainant has not met its burden of proof on the element of Registration and Use in Bad Faith. As noted above, the UDRP Rules require a complainant to prove all three elements in order to make a case. Having decided that Complainant has failed to prove one of these necessary elements, registration and use in bad faith, the Panel deems it unnecessary to discuss and rule on the other two elements.
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that Respondent acted in bad faith).
The Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because we conclude that Respondent had rights and legitimate interests in the Domain Name. See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel finds that Respondent has not registered or
used the <childcarecareers.com>
domain name in bad faith since it finds that Respondent has not violated any of
the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would
constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). As Respondent points out, “childcare” and
“careers” are both dictionary words. The
combination of the words is not distinctive, but the term is simply a descriptive
phrase for the services offered. The
domain name was registered in May 2003 which was three years before Complainant
asserted the mark was registered by Complainant in
The Panel further finds that Respondent is using the terms fairly and legitimately to earn revenues through advertisement of services described in the term. Complainant’s failure to bring any action for so long supports a lack of apparent harm. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where Respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt Complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Reverse Domain Name Highjacking
Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends Complainant knew or should have known of Respondent’s business and that it could not satisfy either or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii). The Panel finds that such an assertion is without merit in this case, and that Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <childcarecareers.com> domain name through its common law use of the mark, and as such, Complainant’s filing is not an abuse of the UDRP Policy. Although the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on Complainant’s part, which was not proven because Complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Timothy D. O’Leary, Presiding Panelist
Hon. Tyrus R. Atkinson, Jr., Diane Cabell,
Dated: May 12, 2008
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