National Arbitration Forum

 

DECISION

 

Everglades Direct, Inc. v. HR Direct LLC

Claim Number: FA0908001278110

 

PARTIES

Complainant is Everglades Direct, Inc. (“Complainant”), represented by Collin B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett, P.A., Minnesota, USA.  Respondent is HR Direct LLC (“Respondent”), represented by Ernest Svolto, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hrdirectonline.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 7, 2009.

 

On August 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hrdirectonline.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 31, 2009 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@hrdirectonline.com by e-mail.

 

Respondent’s Response was submitted only in electronic format prior to the August 31, 2009, response deadline.  ICANN Supplemental Rule 5 requires that, within twenty days of the date of the commencement of the administrative proceeding, the Respondent shall file a response in hard copy and in electronic form.[1]

 

Complainant filed a timely Additional Submission on September 8, 2009.

 

On September 9, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant Everglades Direct, Inc. is in the business of providing personnel management tools and services, such as forms, legal compliance posters, software and training kits to help businesses manage employment compliance and regulatory requirements.  Complainant owns a number of U.S. trademark registrations[2] for the mark HR DIRECT and a registration for the mark HRDIRECT[3], which it uses on or in connection with the above-noted goods and services.  The earliest registration issued in June 1995, and each registration sets forth a date of first use in commerce of October 1993. Respondent also owns the domain name hrdirect.com, through which it promotes its HR DIRECT goods and services. See Complaint, Exhibit F. The domain name was registered on January 31, 1995.

 

Complainant asserts that the disputed domain name <hrdirectonline.com> is confusingly similar to its HR DIRECT and HRDIRECT marks because it contains Complainant’s mark HR DIRECT in its entirety followed by the generic or descriptive word “online.”

 

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent owns no federally registered marks for HR DIRECT or HR DIRECT ONLINE and that Respondent is not affiliated with Complainant nor licensed or authorized by Complainant to use Complainant’s marks.

 

Moreover, Complainant maintains, Respondent does not use the domain name in connection with a bona fide offering of goods and services under the Policy.  Rather, according to Complainant, Respondent uses the website <hrdirectonline.com> to offer goods and services that compete directly with Complainant’s goods and services.

 

With respect to the issue of bad faith registration and use, Complainant argues that Respondent’s registration of <hrdirectonline.com> suggests that Respondent knew of Complainant’s rights in the HRDIRECT and HR DIRECT marks and, therefore, acted in bad faith in registering the domain name.  Complainant asserts that Respondent had at least constructive notice of Complainant’s rights in its marks when it registered the disputed domain name in August 2005.  Complainant contends that Respondent’s knowledge of Complainant’s trademark rights can also be inferred from the fact that the disputed domain name is confusingly similar to Complainant’s federally registered marks   and to Complainant’s domain name hrdirect.com, all of which Complainant registered long before Respondent registered the domain name in issue.

 

According to Complainant, Respondent’s bad faith can also be readily inferred from its use of Complainant’s registered marks to divert Internet users to Respondent’s site containing competing goods and services.

 

B. Respondent

In its Response, Respondent takes issue with Complainant’s contention that the parties offer competing goods and services.  Respondent asserts that Complainant’s website is intended for clients or potential clients to order employment management forms and documents, including posters and training kits, while Respondent’s website “is in no way a website designed with the intent for clients or potential clients to purchase any forms, documents, posters or training kits.” Respondent contends that the fundamental services of the parties “are entirely different.  The website held by complainant is an ordering form while the website held by respondent is an informational site designed to illustrate services.  Any client or potential client would realize that the website belonging to complainant is vastly different from the website operated by respondent.”

 

Respondent also notes the existence of other domain names that incorporate the term hrdirect, including hrdirectinc.com, unitedhrdirect.com, hrdirect.net, and hrdirect.org.  According to Respondent, these domain names are used by human resource service providers.  “Because the service models and use of the different domain names correspond with the services provided by complainant and respondent respectively, it is conceivable that any current or potential clients would not see the domain as confusingly similar.”

 

On the issue of rights or legitimate interests, Respondent indicates that its domain name was legally purchased.  Relevant to the issue of bad faith registration and use, Respondent contends that at no point was there mal intent or unethical business practices in obtaining the disputed domain name.  It asserts that it was unaware of the Complainant’s mark or that the domain name was “in any way a violation being that it was readily available for purchase.”  Respondent also notes that any misdirected internet users have always been correctly redirected to the appropriate website.

 

 

C. Additional Submissions

In its Additional Submission, Complainant maintains that “it is clear that Respondent uses its <hrdirectonline.com> site to offer goods that directly compete with Complainant’s goods.  Such site, Complainant notes, states that “HR Direct will provide employer with all necessary forms relating to the first stage of the employee life cycle.”  See Complaint, Exhibit U.  According to Complainant, even though such forms may not be available for order online, they are promoted on Respondent’s website to induce the purchase of forms.

 

The fact that Complainant’s goods may be ordered directly from its website while Respondent requires customers to call Respondent to place an order does not avoid a determination of likelihood of confusion, Complainant asserts. “Consumers are likely to be confused as to the source of the goods promoted on Respondent’s website regardless of whether those goods may be ordered online or via telephone.” Complainant alleges that any argument to the contrary is baseless from a trademark perspective, “because trademark use is the `bona fide use of a mark in the ordinary course of trade’, and use of the mark in advertising and promotions constitutes use in commerce.”

 

With respect to the four other web sites using the mark HR DIRECT, Complainant indicates that none of such sites promotes goods that directly compete with those offered by Complainant and that, in any case, the existence of such other sites does not invalidate Complainant’s right to enforce its trademark rights.

 

FINDINGS

The Panel finds that: (1) the disputed domain name is confusingly similar to a trademark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was not registered and is not being used in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the disputed domain name <hrdirectonline.com> is confusingly similar to Complainant’s mark HRDIRECT and HR DIRECT.  As Complainant notes, the disputed domain name incorporates Complainant’s marks in their entirety, adding only  the generic or descriptive term “online” and the top level domain “.com”.  Previous ICANN panels have held that the addition of a generic or descriptive term or the addition of a top level domain fails to adequately distinguish a disputed domain name from a complainant’s mark.  See, e.g. Warner Bros. Entm’t. Inc. v. Rana, FA 304696 (Nat. Arb Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to complainant’s mark HARRY POTTER failed to distinguish the domain name from the mark); Bond & Co. Jewelers Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum April 30, 2007) (finding that the elimination of spaces between terms and the addition of a top level domain do not defeat assertion of confusing similarity).

 

Respondent’s assertion that Complainant’s website is an ordering form while Respondent’s website is an information site is irrelevant to the issue of whether the disputed domain name is confusingly similar to Complainant’s marks.   Most ICANN panels have held that such a determination is made solely on the basis of whether the alphanumeric string constituting the domain name is sufficiently similar to the trademark.  See, e.g., Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000).

 

It is also irrelevant to the issue of confusing similarity that there exist four other domain names that include the term “hrdirect.”  The issue to be decided in connection with this element of the Policy is solely whether the disputed domain name is confusingly similar to the involved marks.  As noted above, the Panel concludes that this is the case.

 

The Panel also concludes that the evidence establishes that Complainant has rights in the HRDIRECT and HR DIRECT marks.  See, e.g., Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with United States Patent and Trademark Office was adequate to establish rights pursuant to paragraph 4(a)(1) of the Policy).

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.  Respondent’s assertion that the domain name was legally purchased does not necessarily create rights or legitimate interests.  

 

The Panel concludes that, given its determination that the disputed domain name is confusingly similar to Complainant’s marks, as well as evidence that the parties offer competing goods and services (see Complaint, Exhibits E and T), it may not be held that Respondent is using the domain name in connection with a bona fide offering of goods or services, under paragraph 4(c)(i) of the Policy.   See, e.g., Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). There also is no evidence that any of the other circumstances set forth in paragraph 4(c) of the Policy is applicable.  

 

Registration and Use in Bad Faith

 

At the outset of its consideration of this issue, the Panel notes that the Policy “establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of `abusive registrations’.”  See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy.

 

Complainant contends that “it is abundantly clear that Respondent knew of Complainant’s intellectual property rights in the mark HR DIRECT® when it registered the domain name at issue.”  As noted above, in support of such argument, Complainant relies on the fact that the disputed domain name is confusingly similar to Complainant’s marks and that Respondent is promoting competing goods and services under such confusingly similar domain name.  In support of its argument that the disputed domain name was registered and is being used in bad faith, Complainant also relies on the constructive notice provision of U.S. trademark law.

 

On the other hand, as also noted above, Respondent contends, in part, that it was unaware of the Complainant’s mark or that the domain name was “in any way a violation being that it was readily available for purchase.” It also indicates that any misdirected internet users have always been correctly redirected to the appropriate website.

 

As noted in The Skin Store, Inc. v. eSkinStore.com, D2004-0661 (WIPO Oct. 6, 2004), (“[g]enerally, panels deciding these disputes have taken the view that a complaint cannot succeed unless at the outset, when registering the Domain Name, the Respondent did so with the Complainant and/or its trade/service mark in mind.”).  As the panel in The Skin Store case pointed out, however, paragraph 4(b)(iv) of the Policy makes no reference to the respondent’s motives at the time of registration but, instead, focuses on respondent’s use of the domain name. 

 

The fact that the disputed domain name is confusingly similar to Complainant’s marks and that the parties compete does not compel a determination that such name was registered and is being used in bad faith.  The Panel notes that paragraph 4(b)(iv) of the Policy requires evidence that the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s site by creating a likelihood of confusion (emphasis added). Moreover, in the opinion of this Panel, the constructive notice provision of U.S. trademark law may not be relied upon to establish the requisite bad faith. As noted in paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “[m]ost panels have declined to introduce the concept of constructive notice into the UDRP.”  See, e.g., Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith); Custom Modular Direct LLC v. Custom Modular Homes, Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”)

 

The Panel further notes that the domain name <hrdirectonline.com> is the sort of name that a human resources company, such as Respondent, might wish to use.  The Panel is aware that the human resources field is frequently referred to as “hr.”    

 

It is also relevant that, while the disputed domain name was registered in August 2005, Complainant did not commence this UDRP proceeding until August 2009.[4]  While laches is not generally recognized under the Policy, such a long delay in taking action, nevertheless, raises the inference that Complainant did not truly believe the disputed domain name was registered in bad faith.  Rolling Stone LLC v. Robbins Carnegie Inc.  FA 318048 (Nat. Arb. Forum Oct. 14, 2004) (delay could indicate that Complainant “did not seriously believe” that Respondent had violated the Policy.”); see also Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute].”)  See also New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that complainant’s failure to initiate a suit in over two years indicated that complainant did not believe that Respondent intended to attract customers through confusion).

 

The Panel has reviewed the cases submitted by Complainant in support of its assertion of bad faith registration and use.  For the most part, they involve marks that have achieved great market penetration, such as GOOGLE®, CANON®, and DINERS CLUB®, and/or cases in which no response was filed.  In the Texas Wind Power Co. case cited by Complainant, the panel noted, in part, that respondent “is engaged in the same line of business in the same territory [as complainant].” (emphasis added).  Under the particular facts in the cases cited by Complainant, it was reasonable to conclude that the disputed domain name was registered and being used in bad faith.  By contrast, in this case there is no evidence relating to the strength or market penetration of Complainant’s marks.

 

The issue of bad faith in this case requires the Panel to make credibility determinations, somewhat it is ill-equipped to do.  “For the Panel to hold that the Respondent is a liar, the circumstantial evidence has to be overwhelmingly in favour of the Complainant.”  See Reuters Ltd. v. Ghee Khaan Tan, D2000-0670 (WIPO Aug. 4, 2000). 

 

In sum, bearing in mind that Complainant bears the burden of proof on all elements of the Policy, the Panel does not have before it sufficient evidence that this is a clear case of cybersquatting. The Panel is not satisfied that the disputed domain name was registered and is being used in bad faith.  

 

DECISION

In view of the Panel’s determination that Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Jeffrey M. Samuels, Panelist
Dated: September 23, 2009