National
Arbitration Forum
DECISION
Korn/Ferry
International v. The Careermosaic Cornperry, Inc.
Claim
Number: FA0508000538465
Complainant is Korn/Ferry
International ("Complainant"), represented by Carole E. Reagan,
of Morrison & Foerster LLP, 19900 MacArthur Blvd., 12th Floor,
Irvine, CA 92612-2445. Respondent is The
Careermosaic Cornperry Inc. ("Respondent"), Daeyoung Bldg., 11th
Floor, 344-1, Yoido-dong, Youngdungpo-ku Seoul 150-714, KR.
The domain names
at issue are <cornperry.com>
and <ecornperry.com>,
registered with Gabia, Inc. (Gabia.com).
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.
Hon. Ralph
Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
August 11, 2005; the National Arbitration Forum received a hard copy of the
Complaint on August 16, 2005. The
Complaint was submitted in both Korean and English.
On August 18,
2005, Gabia,Inc. (Gabia.com) confirmed by e-mail to the National Arbitration
Forum that the <cornperry.com>
and <ecornperry.com> domain
names are registered with Gabia, Inc. (Gabia.com) and that Respondent is the
current registrant of the names. Gabia,
Inc. (Gabia.com) has verified that Respondent is bound by the Gabia, Inc.
(Gabia.com) 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 August 30,
2005, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 19, 2005 by which Respondent could file a response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@cornperry.com and postmaster@ecornperry.com by e-mail.
Having received no response from Respondent,
the National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
On September 25,
2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 (the "Rules") "to employ reasonably available means
calculated to achieve actual notice to Respondent." 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.
Pursuant to Rule
11(a) the Panel determines that the language requirement has been satisfied
through the Korean language Complaint and Commencement Notification and, absent
a Response, determines that the remainder of the proceedings may be conducted
in English.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent's <cornperry.com> and <ecornperry.com>
domain names are confusingly similar to Complainant's KORN/FERRY mark.
2.
Respondent does not have any rights or legitimate interests in the <cornperry.com> and <ecornperry.com> domain names.
3. Respondent registered and used the <cornperry.com> and <ecornperry.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Korn/Ferry International is the world's largest executive recruitment company,
with hundreds of consultants in seventy countries world-wide. Complainant has been a leading recruitment
firm since 1970 and has become a household name in the international business
world-wide.
Complainant owns
over fifty service marks world-wide for the KORN/FERRY or KORN FERRY
marks. Complainant has registered the
KORN/FERRY mark with the United States Patent and Trademark Office
("USPTO") (Reg. No. 1,761,642 issued March 30, 1993).
Respondent
registered the <cornperry.com>
and <ecornperry.com> domain
names on January 20, 2000 and February 24, 2002, respectively. Respondent's domain names resolve to
websites offering employment recruiting services that directly compete with
those offered by Complainant.
In 2001, Complainant filed an ICANN
proceeding against Respondent seeking transfer of several domain names
including the <cornperry.com>
domain name in dispute in this proceeding.
On June 7, 2001 the National Arbitration Forum (NAF) issued a decision
in favor of Complainant and ordered transfer of the domain names including the
<cornperry.com> domain name in
dispute in this proceeding. See
Korn/Ferry International v. The CareerMosaic Cornperry, Inc., FA 97117
(Nat. Arb. Forum June 7, 2001). Complainant
inadvertently allowed its registration of the <cornperry.com> domain name to lapse and Respondent hastily
registered the domain name.
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.
Complainant
asserts that it has established rights in the KORN/FERRY mark through
registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) ("Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark."); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
("Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.").
Moreover, the
<cornperry.com> and <ecornperry.com> domain names are
confusingly similar and phonetically identical to Complainant's KORN/FERRY mark
because the domain names misspell Complainant's mark by replacing the letters
"k" and "f" with the letters "c" and
"p" and additionally the <ecornperry.com>
domain name adds the letter "e."
Such changes are not enough to overcome the confusingly similar aspects
of Respondent's domain names pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City,
FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant's mark satisfies ¶ 4(a)(i) of the
Policy); see also VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June
28, 2000) (finding that the pronunciation and spelling between the domain name
<venesign.com> and the complainant's mark, VERISIGN, are so close that
confusion can arise in the mind of the consumer); see also YAHOO! Inc. v.
Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name
<yawho.com> is confusingly similar to the complainant's YAHOO mark).
Furthermore, the
addition of a generic top-level domain does not negate the confusingly similar
aspects of Respondent's domain names pursuant to Policy ¶ 4(a)(i). 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 Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as ".net" or ".com" does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
neither has rights or legitimate interests in the <cornperry.com> and <ecornperry.com>
domain names nor claims to have them.
When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent's failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Moreover, Respondent
is not commonly known by the <cornperry.com>
and <ecornperry.com> domain
names. Thus, the Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent
was not commonly known by the mark and never applied for a license or
permission from complainant to use the trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent
has no rights or legitimate interests in domain names because it is not
commonly known by the complainant's marks and the respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use).
Furthermore, Respondent is using the <cornperry.com> and <ecornperry.com> domain names to
operate a website featuring employment recruiting services which directly
compete with those offered by Complainant's business. Such competitive use is not 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) ("Respondent's appropriation of [Complainant's]
SAFLOK mark to market products that compete with Complainant's goods does not
constitute a bona fide offering of goods and services."); see also
Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the
parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site); see also Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's
sole purpose in selecting the domain names was to cause confusion with the
complainant's website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Respondent has
registered and used the <cornperry.com>
and <ecornperry.com> domain
names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain names,
which contain confusingly similar versions of Complainant's KORN/FERRY mark, to
market employment recruiting services in direct competition with
Complainant. Such use constitutes
disruption and is evidence that Respondent registered and used the domain names
in bad faith pursuant to Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding respondent acted in bad faith by attracting Internet
users to a website that competes with complainant's business); see also
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000) (finding that the minor degree of variation from
complainant's marks suggests that respondent, complainant's competitor,
registered the names primarily for the purpose of disrupting complainant's
business).
Moreover,
Respondent registered and used the disputed domain names in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the <cornperry.com> and <ecornperry.com>
domain names to intentionally attract, for commercial gain, Internet users to
its website, by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's
mark by using a domain name identical to the complainant's mark to sell the
complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website).
Furthermore, Respondent has used the <cornperry.com> and <ecornperry.com> domain names, which
contain Complainant's KORN/FERRY mark, to redirect Internet users to
Respondent's website featuring goods and services that compete with
Complainant's business. Even further,
in 2001, Complainant filed an ICANN proceeding against Respondent seeking
transfer of several domain names including the <cornperry.com> domain name in dispute in this proceeding. On June 7, 2001 the National Arbitration
Forum issued a decision in favor of Complainant and ordered transfer of the
domain names including the <cornperry.com>
domain name in dispute in this proceeding.
This suggests that Respondent had actual knowledge of Complainant's
rights in the mark when it registered the domain names and chose the disputed
domain names based on the goodwill Complainant has acquired in its KORN/FERRY
mark. Furthermore, Complainant's
registration of the KORN/FERRY mark with the USPTO bestows upon Respondent
constructive notice of Complainant's rights in the mark. Respondent's registration of domain names
containing versions of Complainant's mark in spite of Respondent's actual or
constructive knowledge of Complainant's rights in the mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between the complainant's mark and the
content advertised on the respondent's website was obvious, the respondent
"must have known about the Complainant's mark when it registered the
subject domain name"); see also Orange Glo Int'l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) ("Complainant's OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cornperry.com>
and <ecornperry.com> domain
names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
October 7, 2005
National Arbitration Forum
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