Esaress International S.A.R.L. v. Spencer Stuart
Claim Number: FA1403001546556
Complainant is Esaress International S.A.R.L. (“Complainant”), represented by Heath Brewer, Amsterdam. Respondent is Spencer Stuart (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stuartincorporated.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 4, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 4, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <stuartincorporated.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the registration agreement of GODADDY.COM, LLC, 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 March 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2014 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 bil-ling contacts, and to postmaster@stuartincorporated.com. Also, on March 5, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail ad-dresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 March 31, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an entrepreneurial venture in which senior professionals provide consulting services to clients to build and/or strengthen their senior management.
Complainant holds a registration for the SPENCER STUART service mark, on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,240,274, registered April 20, 1999).
Respondent registered the contested <stuartincorporated.com> domain name on December 31, 2013.
The domain name is confusingly similar to Complainant’s SPENCER STUART service mark.
Respondent has not been commonly known by the domain name.
Respondent has no relationship or agreement with Complainant that would allow Respondent to use its SPENCER STUART mark.
The domain name resolves to a website that appears to be that of SPENCER STUART, including an almost identical logo and content mimicking the original SPENCER STUART website.
The main content of the resolving website emulates Complainant’s services and was pieced together from various other websites belonging to legitimate provid-ers of executive search services.
Respondent is using the resolving website to advertise and offer a fraudulent version of Complainant’s services, from the operation of which it seeks to obtain financial gain.
Respondent has no rights to or legitimate interest in respect of the domain name.
Respondent has registered the domain name and installed content on the web-site that attracts Internet users by creating a likelihood of confusion with Com-plainant’s SPENCER STUART mark and services.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the SPENCER STUART service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding, under Policy ¶ 4(a)(i), that a UDRP complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO).
Turning to the central posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <stuartincorporated.com> domain name is confusingly similar to Complainant’s SPENCER STUART service mark. The domain name includes the STUART portion of the mark, merely adding the generic term “in-corporated” and the generic Top Level Domain (“gTLD”) “.com.” These alter-ations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. As to the deletion of a portion of a mark in forming a domain name, see Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding a domain name confusingly similar to a UDRP complainant’s TESCO PERSONAL FINANCE mark despite its deletion of the term ‘personal.’
With regard to Respondent’s addition of the generic term “incorporated” to the domain name, see Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the inclusion of the generic term “INC” in a domain name containing a UDRP complainant’s mark does not avoid confusing similarity).
Finally, see Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding that attaching a gTLD to the mark of another in forming a domain name is “unable to create a distinction capable of overcoming a finding of con-fusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
Complainant argues that Respondent has not been commonly known by the <stuartincorporated.com> domain name, and that Complainant does not have a professional relationship or any agreement with Respondent that would allow Respondent to use its SPENCER STUART mark. Moreover, although the per-tinent WHOIS information identifies the registrant of the contested domain name as “Spencer Stuart,” there is nothing in the record to indicate that Respondent has been commonly known by that name. On this record, we conclude that Re-spondent has not been commonly known by the domain name so as to have demonstrated that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel there finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.”
We next observe that Complainant asserts, without objection from Respondent, that the <stuartincorporated.com> domain name resolves to a website that ap-pears to be that of SPENCER STUART, including an almost identical logo and content mimicking the original SPENCER STUART website, that the main con-tent of the resolving website emulates Complainant’s services and was pieced together from various other websites belonging to legitimate providers of execu-tive search services, and that Respondent is using the resolving website to ad-vertise and offer a fraudulent version of Complainant’s services, from the oper-ation of which it seeks to obtain financial gain.
This employment of the domain name is neither a bona fide offering of goods or services as provided in Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use as provided in Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel there finding that a respondent’s attempt to pass itself of as a UDRP complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <stuartincorporated.com> domain name, which is confusingly similar to Complainant’s SPENCER STUART service mark, in an effort to profit from con-fusion caused among Internet users as to the possibility of Complainant’s assoc-iation with the domain name and its resolving website, demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See, for ex-ample, Amer. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the panel there finding that:
Respondent is using the domain name at issue to resolve to a web-site at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Com-plainant’s business and trademarks. The Panel finds that this con-duct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <stuartincorporated.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 7, 2014
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