Schwartz & Co., LLC v. Eric Ehmer
Claim Number: FA1503001608725
Complainant is Schwartz & Co., LLC (“Complainant”), represented by Peter J. Ims of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is Eric Ehmer (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copierrecruits.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 known conflict in serving as Panelist in this proceeding.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2015; the Forum received payment on March 9, 2015.
On March 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <copierrecruits.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 GoDaddy.com, LLC 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 March 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2015 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@copierrecruits.com. Also on March 12, 2015, 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 March 30, 2015.
Complainant submitted a timely Additional Submission that was received on March 25, 2015.
Respondent also submitted an Additional Submission that was received on March 28, 2015 and determined to be deficient under Supplemental Rule 7.
Complainant submitted an Additional Submission that was received on March 31, 2015 and did not comply with Supplemental Rule 7.
On April 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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 asserts the following:
- Complainant has registered the COPIER RECRUITERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,568,770 registered Jan. 27, 2009). The mark is used on or in connection with employment hiring, recruiting, placement, staffing, and career networking services. The <copierrecruits.com> domain name is confusingly similar to the COPIER RECRUITERS mark because the domain name merely omits the letters “er” to form a different version of the verb “to recruit.”
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name or in possession of licensing rights that would allow Respondent to use the COPIER RECRUITERS mark in domain names. Further, the disputed domain name resolves to a webpage wherein Respondent is offering competing services.
- Respondent has registered and is using the disputed domain name in bad faith. Respondent is disrupting Complainant’s business by offering competing services. By offering such competing services, Respondent is also attempting commercially benefit from a likelihood of confusion. Lastly, Respondent should be held to an actual and/or constructive knowledge standard.
B. Respondent
Respondent does not dispute Complainant’s registered rights in the COPIER RECRUITERS mark, but contends that Complainant did not have sufficient rights prior to registration as the mark was only registered on the Supplemental Register. According to Respondent, the disputed domain name is not confusingly similar to the COPIER RECRUITERS mark. Respondent argues that the domain name consists of generic descriptive words for which Complainant has no rights of exclusive use.
Respondent states it has rights or legitimate interests in the disputed domain name. Respondent claims to be the owner of a business that operates under the name “Copier Recruits,” and that business makes bona fide offerings or services.
Respondent states it has not engaged in bad faith registration or use. According to Respondent, the disputed domain name consists of generic descriptive terms, which negates a finding of bad faith.
C. Additional Submissions
In its Additional Submission dated March 25, 2015, Complainant states it has demonstrated long and extensive use of the COPIER RECRUITERS mark in order to acquire rights in the generic or descriptive terms “Copier” and “Recruiters.” Complainant claims that its USPTO registration disclaimer means that Complainant cannot assert exclusive rights to the word “recruiters” apart from the mark as registered. However, Complainant would still retain rights in the COPIER RECRUITERS mark as a whole. Finally, Complainant argues that Respondent’s offer to sell the disputed domain name demonstrates bad faith.
Respondent sent an Additional Submission on March 30, 2015. It essentially repeats its arguments included in its Response. Respondent also states that other parties are free to use the term COPIER in combination with other generic or descriptive nouns. Respondent further submits that Complainant has failed to submit any evidence of any marketing or advertising campaign carried out by it under COPIER RECRUITERS or any sales affected by it using this mark. Respondent states it has expanded money in procurement of domain name and marketing materials for the bona fide use of the domain name. Finally, Respondent states it wanted to settle the dispute and just wanted the compensation for the money invested in setting up its business.
Preliminary Issue: Deficient Additional Submission
Complainant and Respondent both submitted multiple Additional Submissions. The Forum’s Supplemental Rule 7(e) only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) to be filed per Party. Thus, the second submission of Additional Submissions by Complainant and Respondent have been deemed deficient by the Forum pursuant to Supplemental Rule 7. The Panel may accordingly determine what amount of weight, if any, should be given to Complainant’s and Respondent’s deficient Additional Submissions. In the case at hand, the Panel chooses not to consider both deficient Additional Submissions as neither set out any new facts or other circumstances that would justify the late submissions. See SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) (choosing not to consider either the complainant’s or the respondent’s additional submissions that were received after the stated deadline where neither set out any new facts or other circumstances that would justify the late submissions).
Complainant has registered two figurative marks and applied for one word mark including the combination of terms COPIER RECRUITERS with the United States Patent and Trademark Office (“USPTO”). The marks have been registered for employment hiring, recruiting, placement, staffing, and career networking services.
Respondent registered the <copierrecruits.com> domain name on September 24, 2014 and it used to provide services similar to the Complainant’s services.
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.
Complainant has registered two figurative marks and applied for one word mark including the combination of terms COPIER RECRUITERS (collectively referred to as the “COPIER RECRUITERS mark”) with the United States Patent and Trademark Office (“USPTO”). See Compl., at Attached Ex. 2-3. The Panel considers that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <copierrecruits.com> domain name is confusingly similar to the COPIER RECRUITERS mark because the domain name merely omits the letters “er” to form a different version of the verb “to recruit.” Respondent states that the word “recruits” constitutes a different noun.
The Panel notes that transposing a word in a mark to create a different form of that word in the domain name cannot negate a finding of confusing similarity. See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”).
Respondent contends that the <copierrecruits.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark. However, the Panel considers that such a determination is not necessary under Policy ¶ 4(a)(i). Indeed, this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
In view of the above, the Panel concludes that the disputed domain name is confusingly similar to the COPIER RECRUITERS mark.
Complainant asserts that Respondent is not commonly known as the <copierrecruits.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the COPIER RECRUITERS mark in domain names. In addition, Complainant claims that Respondent is using the domain name to offer services that compete with those offered under the COPIER RECRUITERS mark.
However, the Panel considers that a respondent may have a right or legitimate interest to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark. See, e.g., Harvard Lampoon, Inc. v. Reflex Publishing Inc. (WIPO Case No. D2011-0716); National Trust for Historic Preservation v. Barry Preston (WIPO Case No. D2005-0424).
In view of the descriptive character of the Complainant’s COPIER RECRUITERS mark, the Panel finds that Respondent may indeed have a right to register and use the <copierrecruits.com> domain name. As Complainant does not provide sufficient proof of the reputation of its mark, the Panel considers that it is at least plausible that Respondent did not aim in registering the disputed domain name to profit from and exploit Complainant's COPIER RECRUITERS mark.
Respondent appears to be using the disputed domain name to offer recruiting services. The fact that Respondent offered to sell the disputed domain name to Complainant casts doubts on whether this activity is genuine. However, the Panel finds that the mere offer to sell the domain name is not sufficient to exclude a bona fide offering of goods or services by Respondent.
Having no other elements showing the lack of legitimate interests in the disputed domain name, the Panel finds that the Complainant has failed to show the absence of rights or legitimate interest.
Finally, the Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. This case involves disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related U.S. law issues beyond the scope of the Panel’s limited jurisdiction under the Policy. See Family Watchdog LLC c. Lester Schweiss (WIPO Case No. D2008-0183). Accordingly, in rendering its decision below, the Panel expresses no view on the respective merits of the parties’ cases, as presented, in the instant dispute.
For Complainant to prevail, it must prove all three elements. Because of the
Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel
makes no ruling on this element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA
116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the Complainant
must prove all three elements under the Policy, the Complainant’s failure to
prove one of the elements makes further inquiry into the remaining element
unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected,
FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into two
UDRP factors where the Complainant could not satisfy the requirements of [the
third UDRP factor).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <copierrecruits.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion, Panelist
Dated: April 21, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page