Capgemini North America, Inc. v. Randel Tomina
Claim Number: FA1601001658191
Complainant is Capgemini North America, Inc. (“Complainant”), represented by Gerry Silver, of Sullivan & Worcester LLP, New York, USA. Respondent is Randel Tomina (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capgeminirecruiting.com>, registered with Name.com, Inc.
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.
Complainant submitted a Complaint to the Forum electronically on January 26, 2016; the Forum received payment on January 26, 2016.
On January 27, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <capgeminirecruiting.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2016, 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@capgeminirecruiting.com. Also on February 1, 2016, 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.
A timely Response was received and determined to be complete on February 26, 2016.
On March 3, 2016, Complainant submitted an untimely Additional Submission. However, in the exercise of its general powers under Rule 10, the Panel determines to consider such submission in reaching its decision. On March 8, 2016, Respondent submitted a timely Additional Submission.
On March 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Capgemini North America, Inc. is one of the world’s foremost providers of consulting, technology and outsourcing services and local professional services. Complainant has major operations in over 40 countries and employs over 180,000 people.
Complainant asserts that it owns a global portfolio of registered trademarks in connection with its CAPGEMINI brand, including U.S. Trademark Registration No. 3133247 for the mark CAPGEMINI CONSULTING TECHNOLOGY, OUTSOURCING and Registration No. 3027251 for the mark CAPGEMINI GOVERNMENT SOLUTIONS. Complainant indicates that it has used the CAPGEMINI mark in Europe since at least as early as 1986 and in the U.S. as least as early as 2004. Complainant also operates the website located at capgemini.com.
According to Complainant, the disputed domain name, capgeminirecruiting.com, was registered on September 27, 2015, after Respondent was denied employment by Complainant. On January 12, 2016, Complainant contacted Respondent demanding that Respondent immediately cease all use of the disputed domain name and transfer ownership to Complainant. Respondent failed to comply.
Complainant maintains that the disputed domain name is confusingly similar to Complainant’s CAPGEMINI mark. Complainant points out that the domain name contains the entirety of Complainant’s mark and that the addition of the descriptive word “recruiting” and of the generic top-level domain “.com” “is insufficient to relieve the domain name of its confusing similarity.”
Complainant insists that no facts exist to support a finding that Respondent has any rights or legitimate interests in the domain name. Complainant maintains that Respondent has no trademark registrations or other rights in the disputed domain name, is not commonly known by the domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name. According to Complainant, “Respondent may or may not have the right to freely state his opinions of Complainant under applicable law, but `free speech rights do not extend to the use of a confusingly similar domain name for such purposes’.” In addition, Complainant contends that there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the domain name and that Respondent’s use cannot be considered legitimate, fair or bona fide because it infringes upon Complainant’s trademark rights by creating a likelihood of confusion.
With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondent is deliberately using a confusingly similar domain name with the intent of holding the domain name hostage from Complainant and seeking a fee for its transfer, “presumably for valuable consideration in excess of Respondent’s out-of-pocket costs.” Complainant explains that the website located at the disputed domain name indicates that “We are in the process of selling this domain.” Moreover, Complainant states, Respondent, in his January 12, 2016, email to Complainant’s counsel, stated as follows: “I may potentially be interested in transferring the domain to Capgemini. I may have missed it in your letter, but I can not [sic] find a dollar amount that Capgemini would like to provide me to purchase this domain. Can you please provide that dollar amount?”
Complainant also maintains that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, insofar as Respondent’s ownership of the disputed domain name prevents Complainant from registering and using it for legitimate commercial purposes. “Further, Respondent’s conduct disrupts Complainant’s business by diverting potential job applicants away from Complainant and its own website, capgemini.com and toward Respondent’s website.”
Alleging that Respondent registered the disputed domain name only after Respondent applied for employment with Complainant and Complainant elected not to employ him, Complainant maintains that Respondent had actual knowledge of Complainant’s exclusive rights in the famous CAPGEMINI mark and that such knowledge demonstrates bad faith.
Finally, relying on its contention that the CAPGEMINI mark is famous, Complainant notes that “panels have routinely held that where a domain name incorporates a famous mark, registration of the domain name is prima facie evidence of respondent’s bad faith.”
B. Respondent
Respondent Randel Tomina[1] contends that “entire purpose of this complaint… is a push to harass and silence Respondent” and that Complainant is “just abusing this arbitration forum as a way to silence a voice that is critical of them.” Respondent indicates that he was offered employment by Complainant and received an official offer letter but that Complainant, as a result of a change in its resource needs, rescinded the offer.
Focusing on the elements for relief specified in the Policy, Respondent contends that the disputed domain name is not confusingly similar to CAPEGEMINI. “No one looking for Capgemini’s website will ever type in Capgeminirecruiting.com to find Capgemini’s website,” Respondent declares.
Respondent asserts that the capgeminirecruiting.com website describes the “deceptive tactics” employed by Complainant and, as such, the disputed domain name is appropriate. “The point of the webpage is to discuss Capgemini’s recruiting tactics. As such, CapegeminiRecruiting is a perfectly acceptable name that does not infringe on any trademarks.”
Respondent maintains that he has rights or legitimate interests in the disputed domain name. According to Respondent, “The respondent’s interest is to help inform others of Capgemini’s recruiting practices. Respondent lost another job opportunity at one of Capgemini’s competitors due to the lies of [certain of Complainant’s employees]. Respondent does not want this to happen to others, so Respondent is providing 100% factual information to help prevent others from having to experience this.”[2] Respondent notes that the disputed domain name was created only after he started to receive threatening and harassing messages from Complainant.
Respondent maintains that his website qualifies as a “classic complaint site” and that such sites are not bad faith websites. “They are good faith websites that try and [sic] prevent others from having the same negative experience.” Respondent points out that no ads are placed on the website to generate revenue. Respondent refers to a number of ICANN panel decisions for the proposition that a U.S.-based website that is engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark.
Respondent further argues that there is no chance for confusion with Complainant’s trademark since “[i]t is very clear that the website is not affiliated with Capgemini and instead exists to give an honest review of my experience with Capgemini.”
Respondent also takes issue with Complainant’s contention that he registered the domain name with the intent of selling it back to Complainant. Respondent asserts that he offered to sell the domain name only after Complainant sent its “cease and desist” letter and that, in any case, it is clear that he did not purchase the disputed domain name for the sole purpose of selling it.
Finally, Respondent requests the panel to enter a finding of reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission, Complainant contests Respondent’s assertion that the CAPGEMINI mark and the disputed domain name are not confusingly similar.
It further contends that “it is black letter law that statements on a website that may or may not be an exercise of First Amendment rights do not give Respondent a right to use a confusingly similar domain name.” Complainant cites the panel’s decision in Steven J. Schwartzapfel & Schwartzapfel Lawyers P.C. v. Barrett Sharpe, FA 1523900 (Nat. Arb. Forum Nov. 11, 2013), in support of such black letter law.
Complainant also urges that it set forth in its Amended Complaint numerous examples of conduct by Respondent that constitute bad faith. It notes, for example, that Respondent does not dispute that he had actual knowledge of Complainant’s rights in the CAPGEMINI mark prior to registering the disputed domain name. It also appears, according to Complainant, that Respondent is seeking commercial gain, by admittedly offering to sell the domain name to Complainant. Respondent, Complainant points out, does not state that he is merely seeking to sell the domain name at cost. Complainant also indicates that it appears Respondent is using the domain name to obtain leverage to obtain a favorable settlement in his employment dispute with Complainant.[3]
Complainant also contends that the disclaimer found on Respondent’s website is not sufficient to avoid a finding of bad faith, noting that such disclaimer may be ignored or misunderstood and does nothing to dispel any initial interest confusion.
With respect to Respondent’s claim that this is a case of reverse domain name hijacking, Complainant simply argues that it has satisfied all the elements of the Policy and, therefore, it may not be found that the complaint was brought in bad faith.
In his Additional Submission, Respondent challenges Complainant’s version of the facts regarding the discussions surrounding Respondent’s attempt to secure employment with Complainant. Respondent further reiterates his view that the disputed domain name is not confusingly similar to the CAPGEMINI mark as “[n]o one looking for Capgemini’s website will ever type in Capgeminirecruiting.com to find Capgemini’s website.” According to Respondent, “[t]he domain name is a perfect fit for the content of the website.”
Respondent also repeats the assertion that he has rights or legitimate interests in the disputed domain name. His interest “is to help inform others of Capgemini’s recruiting practices.” Respondent further contends that posting a review and expose of Complainant’s recruiting practices is not in bad faith. With respect to Complainant’s argument that Respondent registered the domain name for commercial purposes by making several offers to sell it to Complainant “presumably” for valuable consideration in excess of Respondent’s out-of-pocket costs, Respondent notes that his offer to sell was made only after receipt of Complainant’s “cease and desist” letter and that it would be improper to rely on presumptions as to what consideration may be sought.
The Panel finds that: (1) the disputed domain name, capgeminirecruiting.com, is confusingly similar to the CAPGEMINI mark; (2) Complainant has rights in the CAPGEMINI mark; (3) Respondent has rights or legitimate interests in the disputed domain name; (4) the disputed domain name was not registered and is not being used in bad faith; and (5) Complainant did not engage in reverse domain name hijacking.
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.
The Panel finds that the disputed domain name, capgeminirecruiting.com, is confusingly similar to the CAPGEMINI mark. As noted by Complainant, the disputed domain name incorporates in full the CAPGEMINI mark. The addition of the descriptive term “recruiting” and of the generic top-level domain “.com” is insufficient to dispel a finding of confusing similarity. See State Farm Mut. Auto Ins. Co. v. statefarmrecruiting.com c/o BlueHost.com Domain Privacy, FA 1140628 (Nat. Arb. Forum Mar. 25, 2008) (finding statefarmrecruiting.com confusingly similar to complainant’s STATE FARM mark.) While Respondent contends in his March 31 submission that he did not engage in trademark infringement, application of the confusing similarity test under the UDRP typically simply involves a straightforward visual or aural comparison of the trademark and the alphanumeric string in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶1.2.
The evidence further supports a determination that Complainant has rights in the CAPGEMINI mark. The Panel, in an order dated March 10, 2016, after noting that none of the registrations set forth in Annex 3 issued in the name of Complainant, Capgemini North America, Inc., requested Complainant to present evidence establishing its rights in the CAPGEMINI mark. In a Declaration dated March 21, Complainant’s Assistant General Counsel indicated that Complainant is a wholly-owned subsidiary of Cap Gemini S.A. and that Cap Gemini licenses to Complainant numerous trademarks, including the mark that is the subject of U.S. Trademark Registration No. 3133247 for the mark “Capgemini. Consulting,Technology.Outsourcing” and Design. Based on the information set forth in the Declaration and the accompanying Exhibits, the Panel concludes that Complainant has rights in the CAPGEMINI mark.[4]
The Panel holds that Complainant has failed to sustain its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
As noted by Respondent, UDRP panels have repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark. The cases so holding are catalogued in Respondent’s Response. Moreover, U.S. courts of appeals, in cases arising under the “Anticybersquatting Consumer Protection Act,” which is codified in Section 43(d) of the Federal Trademark (Lanham) Act, 15 U.S.C. 1125(d), have held that use of a trademark in a domain name for a bona fide criticism site is a protected fair use. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004). See, also, Mayflower Transit LLC v. Prince, 314 F. Supp.2d 362 (DNJ 2004); Northland Ins. Co. v. Blaylock, 115 F. Supp.2d 1108 (D. Minn. 2000); Rohr-Gurnee Motors, Inc. v. Patterson, 2004 U.S. Dist. LEXIS 2068 (N.D. Ill. 2004); Career Agents Network, Inc. v. careeragentsnetwork.biz, 722 F. Supp. 814 (E.D. Mich. 2010). While the Panel acknowledges that there are UDRP cases that go the other way (see, e.g., Steven J. Schwartzapfel & Schwartzapfel Lawyers, P.C. v. Barrett Sharpe, FA 1523900 (Nat. Arb. Forum Nov. 19, 2013); Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005)) it appears that, under the circumstances of this case, such cases represent the minority view. (“In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties… panelists tend to adopt the reasoning of View 2 (though not universally).” “View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶2.4.)
Respondent’s website qualifies as a bona fide criticism site. Annex 5 to the Amended Complaint includes the text of the <capgeminirecruiting.com> website. The site indicates, in part, that it was “created to expose Capgemini, a company that caused me over $100,000 in loses. Perhaps you are a candidate considering a position with Capgemini. I invite you to read my story, which is 100% factual and backed up in emails, and decide from there if you should turn down opportunities and join Capgemini.”
At another point in time the site read, in part, as follows: “This page is run by a former Capgemini Employee that had my job rescinded before I could start without cause. I am a whistleblower here to inform and protect others from experiencing what Capgemini did to me. I have lost thousands of dollars due to Capgemini’s negligence. Capgemini’s goal is to threaten twitter into removing this page.”
Further, there is no evidence, nor does Complainant assert, that Respondent’s site is a pretext for cybersquatting, such as if “Respondent’s actions evidence an ‘intent for commercial gain to misleadingly divert consumers’ or an ‘intent for commercial gain . . . to tarnish the trademark or service mark at issue.” The Panel notes, for example, that Respondent’s site, at one point in time, included, in bold letters and in type much larger than the balance of the site’s text, the following: “Capgemini’s lawyers stated this site could be confused with an actual Capgemini website. Here in bold letters, I am stating this site is not affiliated with Capgemini.” At another point in time, Respondent included the following in big bold type on the webpage: “Obviously, We are not affiliated with Capgemini. This is just an exposé site regarding my experience with Capgemini rescinding a job offer, effectively terminating my employment, without cause. If you’re looking for Capgemini you are in the wrong spot!”
The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. As found in connection with the “rights or legitimate interests” element, the disputed domain name resolves to a legitimate gripe site. While the current site includes the sentence, “We are in the process of selling this domain,” it goes on to indicate that if negotiations with Complainant do not work out, “then we will return the site back to its former status.” The site’s former status does not contain any language regarding a sale of the domain name. Moreover, according to Respondent, the language regarding the sale of the domain was added only after he received a “cease and desist” letter from Complainant and there is no indication for what sum Respondent would be willing to part with title. Thus, in the Panel’s opinion, the evidence does not support a determination of “bad faith” registration and use under paragraph 4(b)(i) of the Policy.
The Panel declines to hold that Respondent registered the domain name “primarily” for the purpose of disrupting the business of a “competitor,” under paragraph 4(b)(iii) of the Policy. The facts do not support a determination that Respondent competes with Complainant in the business of providing consulting services and the evidence indicates that Respondent’s primary purpose in registering the disputed domain name was to inform third parties of his experience with Complainant in connection with seeking employment. While Complainant contends that Respondent registered and is using the domain name for leverage in obtaining a favorable settlement in his employment dispute with Complainant, the site itself does not contain any mention that Respondent is seeking compensation for his alleged losses and, as noted by Complainant, Respondent, to date, has not filed a lawsuit in court.
Reverse Domain Name Hijacking
The Panel declines Respondent’s invitation to find that Complainant has engaged in reverse domain name hijacking. The Panel notes that Complainant prevailed on one element of the Policy and that there is some authority for its position that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Thus, the Panel concludes that Complainant did not use the Policy in bad faith in an attempt to deprive Respondent of the disputed domain name.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <capgeminirecruiting.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: April 11, 2016
[1] Respondent requests that his name be removed from the caption of the case and that Respondent be indicated as www.capgeminirecruiting.com. However, the relevant rules define a “Respondent” as the “holder of a domain-name registration against which a complaint is initiated.” Applying this definition, there appears to be no basis to delete Randal Tomina as the named Respondent.
[2] Respondent includes in his Response and Additional Submission numerous annexes consisting of emails between him and Complainant regarding the events surrounding the parties’ employment dispute. While the Panel has reviewed such annexes, the merits of the employment dispute are beyond the scope of the instant dispute and, as Complainant notes in its Additional Submission, “Tomini is, of course, free to pursue his employment or contract claims against Capgemini in court,…” According to Complainant, Respondent has not asserted any such claims in court.
[3] In footnote 1 of its Additional Submission, Complainant contests Respondent’s version of the facts regarding the parties’ employment dispute and further asserts that Respondent’s arguments regarding his attempt to obtain employment with Complainant are “irrelevant” to the instant dispute.
[4] Respondent, in his reply of March 31, does not appear to contest Complainant’s assertion that it has rights in the CAPGEMINI mark and instead largely reiterates points and arguments raised in his earlier submissions.
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