MSC Headhunting v. Domain Privacy Service FBO Registrant
Claim Number: FA1311001529622
Complainant is MSC Headhunting (“Complainant”), represented by Zubia Hawcroft, United Kingdom. Respondent is Domain Privacy Service FBO Registrant (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msc-headhunters.biz>, registered with Fast Domain Inc.
The undersigned certifies that he 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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 13, 2013.
On November 14, 2013, Fast Domain Inc. confirmed by e-mail to the National Arbitration Forum that the <msc-headhunters.biz> domain name is registered with Fast Domain Inc. and that Respondent is the current registrant of the name. Fast Domain Inc. has verified that Respondent is bound by the Fast Domain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@msc-headhunters.biz. Also on November 19, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm as Panelist.
On December 19, 2013, the Panel issued a Procedural Order No. 1 as below:
i) To Submit a Copy of Pleadings
The Panel notes that the Complaint does not include a copy of the Pleadings from the alleged defamation case. UDRP Rule 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” Pursuant to this Rule, the Panel requests that Complainant submit a copy of the Pleadings related to the alleged defamation suit by December 31, 2013.
ii) To Submit Evidence
Complainant alleges that it has continuously used the MSC HEADHUNTERS mark since 1998. However, it appears the Complaint lacks evidence supporting this fact. The Panel observes that Complainant has not provided sufficient evidence to establish its common law rights in the MSC HEADHUNTERS mark, and thus it requests that Complainant submit additional evidence of its rights in the mark pursuant to UDRP Rule 12 by December 31, 2013.
iii) Deadline for Response
The Respondent may submit any comments in response to the Complainant’s possible additional submission by January 10, 2014.
iv) Deadline for Decision
The Panel will submit the Decision by January 20, 2014.
On December 30, 2013, Complainant submitted additional submission in relation to paragraph 1 of the Panel’s Order. Complainant submitted additional submission in regard to paragraph 2 of the Panel’s Order on January 13, 2014.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on August 30, 2013.
C. Additional Submission
1. Complainant’s Additional Submission
In the Additional Submission of December 30, 2013, Complainant states that Complainant has been trading since 1998 by submitting a copy of its VAT Certificate verifies its trading from October 1, 2001. In addition, Complainant mentions that it registered “msc-hunters” related domain names on the respective dates as follows:
msc-headhunters.co.uk – May 20, 2008
msc-headhunters.com - May 20, 2008
msc-headhunters.eu – March 6, 2009
msc-headhunters.info – March 6, 2009
msc-headhunters.mobi - March 6, 2009
msc-headhunters.net - March 6, 2009
msc-headhunters.org - March 6, 2009
In the additional submission of January 13, 2014, Complainant states that the copy of pleadings has not been submitted because Complainant is still currently pursuing this through its attorney and the court. It has not been provided with a court date for its case.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
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; 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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Preliminary Issue: Concurrent Court Proceedings
Complainant states that Complainant and Respondent are involved in an “ongoing legal case” stemming from Respondent’s failure to pay invoices sent by Complainant. See Complaint at 3. Complainant states that Respondent purchased the <msc-headhunters.biz> in order to “discredit” Complainant in the parties’ concurrent legal proceedings. To support its contentions regarding concurrent legal proceedings, Complainant has submitted letters allegedly exchanged between Complainant’s attorney and Respondent’s attorney. See Complainant’s Exhibits 2 & 3. In a letter dated September 27, 2013, Complainant’s attorney alleges that “Onedge Style S.L.” has used a “web page” in a manner that is defamatory to Complainant. See Complainant’s Exhibit 2. This letter further states, “We are still at a pre-action stage in relation to the dispute between the parties regarding the invoices raised by our client.” See id. The reply from the attorney of “Onedge Style S.L.” states that “Onedge Style S.L.” does not own the disputed domain name nor does it control its content. See Complainant’s Exhibit 3. Specifically, the reply letter states that one of the agents of “Onedge Style S.L.” was interviewed in his personal capacity, and that it was the journalist who conducted this interview that posted it on “the website.” See id. The reply further states the following: “Onedge ha[s] asked [the agent] if he can take down the website and…[the agent] believes that he has accurately described the situation with MSC and that he cannot remove the website as he does not control the website.” See id.
The Panel notes that the letters submitted by Complainant relate to a dispute between Complainant and “Onedge Style S.L.,” while Respondent in this dispute is listed as “Domain Privacy Service FBO Registrant.” Due to Respondent’s failure to respond to the instant proceedings, the Panel reasonably infers that Respondent is “Onedge Style S.L.” and is utilizing the Domain Privacy Service.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See, e.g., W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed). As the concurrent Panel finds accordingly, the Panel decides to proceed under the UDRP despite concurrent court proceedings, and considers the contentions of Complainant as outlined above.
Complainant suggests that it owns common law rights in the MSC HEADHUNTERS mark. The Panel notes that Policy ¶ 4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has common law rights in a mark by showing the mark is recognized by consumers and indicates the complainant as the source of a product or service. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Therefore, the Panel determines whether Complainant has common law rights in the MSC HEADHUNTERS mark and rights in this mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that it has used the MSC HEADHUNTERS mark since 1998. Complainant also states that it owns various domain names incorporating the MSC HEADHUNTERS mark, including the <msc-headhunters.com>, <msc-headhunters.de>, and <msc-headhunters.nl> domain names. Complainant allegedly registered the <msc-headhunters.com> domain name on May 20, 2008. Previous panels have differed in opinion on whether a complainant’s assertion of continuous use is sufficient to establish secondary meaning indicating common law rights. Compare Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)) with Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) ("[T]he mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness."). Pursuant to this precedent, as the Panel reasonably infers that Complainant has continuously used the MSC HEADHUNTERS mark since 1998 due to Respondent’s failure to respond to the instant proceedings, it holds that this is sufficient to establish Complainant’s common law rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel also finds that Complainant’s contention that it owns domain names incorporating the MSC HEADHUNTERS mark bolsters its claim of common law rights.
The Panel notes that UDRP ¶ 4(a)(i) requires a complainant to prove that the disputed domain name is identical or confusingly similar to the complainant’s mark. Complainant does not explicitly allege that the <msc-headhunters.biz> domain name is identical or confusingly similar to its MSC HEADHUNTERS mark. Nonetheless, the Panel observes that the disputed domain name fully incorporates Complainant’s mark and merely replaces the space found between words in the mark with a hyphen and also adds the generic top-level domain (“gTLD”) “.biz.” The Panel notes that it has previously been held that a domain name is identical to a complainant’s mark even though the domain name eliminates a space or adds a hyphen. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Furthermore, previous panels have held that a domain name’s addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). For the foregoing reasons, the Panel holds that the <msc-headhunters.biz> domain name is identical to Complainant’s MSC HEADHUNTERS mark under Policy ¶ 4(a)(i).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
The Panel notes that one of the ways that a respondent can prove that it has rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) is to show that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In the instant proceedings, the Panel notes that the WHOIS information identifies the registrant of the <msc-headhunters.biz> domain name as “Domain Privacy Service FBO Registrant,” and the Panel thus finds that the WHOIS information does not suggest that Respondent is commonly known as <msc-headhunters.biz>. Furthermore, the Panel reasonably concludes that nothing else in the record suggests that Respondent is commonly known as <msc-headhunters.biz>. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent lacks rights or legitimate interests in the <msc-headhunters.biz> domain name under Policy ¶ 4(a)(ii) because Respondent is using the disputed domain name to discredit Complainant’s business with defamatory content. The Panel notes that Complainant does not provide a screenshot of the disputed domain name’s resolving website to support its contention. However, the Panel holds that the letters submitted as Complainant’s Exhibits 2 & 3 suggest that the disputed domain name resolves to a website that displays an interview with one of Respondent’s agents, and that this interview discusses Complainant. Previous panels have reasoned that, although a respondent has a free speech right to disseminate its views on the Internet, this does not mean that a respondent has rights or legitimate interests in a domain name that is identical to a complainant’s mark. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”). Here, the Panel holds that the <msc-headhunters.biz> domain name is identical to Complainant’s MSC HEADHUNTERS mark for the reasons discussed in the preceding section. Accordingly, the Panel analogizes to Compagnie Generale des Matieres Nucleaires, supra to hold that Respondent lacks rights or legitimate interests in the <msc-headhunters.biz> domain name, even assuming the disputed domain name resolves to a complaint website about Complainant.
The Panel notes that although Policy ¶ 4(b) lists four ways in which a respondent can demonstrate bad faith registration and use, it has previously been held that these factors are not intended to be an exhaustive list. See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel considers other additional arguments when determining whether a respondent has demonstrated bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent has demonstrated bad faith registration and use of the <msc-headhunters.biz> domain name under Policy ¶ 4(a)(iii) because Respondent is using the disputed domain name to discredit Complainant’s business with defamatory content. The Panel recalls that although Complainant does not provide a screenshot to support this contention, the letters submitted as Complainant’s Exhibits 2 & 3 tend to suggest that the disputed domain name resolves to a website that displays an interview that criticizes Complainant. The Panel notes that in Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003), the Panel stated, “Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).” The Panel holds here that the <msc-headhunters.biz> domain name is practically identical to Complainant’s MSC HEADHUNTERS mark, as was the case in Diners Club, supra. Therefore, as the Panel accepts Complainant’s contention that the disputed domain name resolves to a website displaying content that is critical of Complainant, the Panel analogizes to Diners Club, supra to hold that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msc-headhunters.biz> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 20, 2014
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