national arbitration forum

 

DECISION

 

HiringSmart Canada Inc. v. Belize Domain WHOIS Service Lt

Claim Number: FA1007001333667

 

PARTIES

Complainant is HiringSmart Canada Inc. (“Complainant”), represented by Rodney C. Kyle, of IP-ADR, Ontario, Canada.  Respondent is Belize Domain WHOIS Service Lt (“Respondent”), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hiringsmart.com>, registered with DIRECTNIC, LTD.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2010.

 

On July 7, 2010, DIRECTNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <hiringsmart.com> domain name is registered with DIRECTNIC, LTD and that Respondent is the current registrant of the name.  DIRECTNIC, LTD has verified that Respondent is bound by the DIRECTNIC, LTD 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 July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2010 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@hiringsmart.com by e-mail.  Also on July 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 August 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  Therefore, the Panel may issue 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hiringsmart.com> domain name is identical to Complainant’s HIRINGSMART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hiringsmart.com> domain name.

 

3.      Respondent registered and used the <hiringsmart.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, HiringSmart Canada Inc., offers human resources consulting under its HIRINGSMART mark.  Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,589,951 issued March 17, 2009) and with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA695189 issued August 30, 2007).

 

Respondent, Belize Domain WHOIS Service Lt, registered the <hiringsmart.com> domain name on November 9, 2009.  The disputed domain name formerly resolved to a website offering to sell the disputed domain name and containing a commercial search engine and hyperlinks to third-parties unrelated to Complainant.  The <hiringsmart.com> domain name currently resolves to a hyperlink directory website that features a commercial search engine and hyperlinks that resolve to Complainant’s competitors in the human resources consulting business.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant states that it has established rights in its HIRINGSMART mark through its trademark registrations of the mark with the USPTO (e.g., Reg. No. 3,589,951 issued March 17, 2009) and the CIPO (e.g., Reg. No. TMA695189 issued August 30, 2007).  The Panel agrees and finds that Complainant has established rights in its HIRINGSMART mark under Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <hiringsmart.com> domain name is identical to Complainant’s HIRINGSMART mark.  The disputed domain name simply adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds the addition of a gTLD fails to change the fact that the disputed domain is identical to Complainant’s mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Thus, the Panel concludes that Respondent’s <hiringsmart.com> domain name is confusingly similar to Complainant’s HIRINGSMART mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant claims that Respondent lacks rights and legitimate interests in the <hiringsmart.com> domain name.  When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <hiringsmart.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant claims that Respondent is not commonly known by the <hiringsmart.com> domain name.  Complainant argues that Respondent has not acquired a trademark for the <hiringsmart.com> domain name.  The WHOIS information identifies “Belize Domain WHOIS Service Lt” as the registrant of the domain name.  Respondent has failed to provide any evidence that it is commonly known by the disputed domain name.  As the Panel can find no evidence in the record to support a finding that Respondent is commonly known by the <hiringsmart.com> domain name, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Respondent formerly used the <hiringsmart.com> domain name to resolve to a website featuring a commercial search engine and hyperlinks which resolved to websites of third-parties unrelated to Complainant.  The Panel infers that Respondent received click-through fees from the hyperlinks.  The Panel finds Respondent’s former use of the disputed domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Respondent’s <hiringsmart.com> domain name currently resolves to a website that features a similar commercial search engine and hyperlinks to Complainant’s competitors in the human resources consulting industry.  The Panel presumes that Respondent receives click-through fees from these competing hyperlinks.  The Panel determines that Respondent’s use of the <hiringsmart.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <hiringsmart.com> domain name under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Respondent’s <hiringsmart.com> domain name also formerly resolved to a website that offered to sell the disputed domain name to the general public.  The Panel finds that Respondent’s offer to sell the disputed domain name further indicates that Respondent lacks rights and legitimate interests in the <hiringsmart.com> domain name under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent formerly used the <hiringsmart.com> domain name to resolve to a website that offered to sell the disputed domain name to the general public.  Complainant provides screen shots of the aforementioned website.  The Panel presumes Respondent was attempting to sell its disputed domain name for an amount greater than Respondent’s out-of-pocket costs.  The Panel concludes that Respondent’s former use of the <hiringsmart.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).

 

Respondent’s <hiringsmart.com> domain name currently resolves to a commercial hyperlink directory website that also features a commercial search engine.  The aforementioned hyperlinks resolve to Complainant’s competitors in the human resources consulting industry.  Internet users interested in Complainant’s consulting services may instead purchase similar human resource consulting services from competitors of Complainant due to Respondent’s use of the identical disputed domain name.  The Panel finds Respondent’s use of the <hiringsmart.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel presumes Respondent commercially benefits from its current use of the <hiringsmart.com> domain name and commercially benefited from its former use of the domain name.  Respondent’s former use of the disputed domain name involved third-party hyperlinks unrelated to Complainant.  Respondent’s current use of the <hiringsmart.com> domain name resolves to a website featuring third-party hyperlinks that resolve to Complainant’s competitors in the human resource consulting business.  The Panel infers that Respondent receives and received click-through fees from the competing and unrelated hyperlinks.  The Panel concludes that Respondent is attempting to commercially benefit from Internet users’ confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and resolving website.  The Panel holds that Respondent’s use of the <hiringsmart.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hiringsmart.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 9, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum