StaffEx Corporation v. Amit
Pamecha
Claim Number: FA0707001029545
PARTIES
Complainant is StaffEx Corporation (“Complainant”), represented by Michael
R. Abejuela, of Clark & Associates Attorneys at Law,
P.C., Market Station,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staffex.com> (the “Domain Name”), registered with Go Daddy
Software, Inc.
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 9, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 11, 2007.
On July 9, 2007, Go Daddy Software, Inc. (“Go Daddy”) confirmed
by e-mail to the National Arbitration Forum that the Domain Name is registered
with Go Daddy and that the Respondent is
the current registrant. Go Daddy has verified that Respondent is bound
by the Go Daddy 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 16, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 6, 2007 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@staffex.com by e-mail.
A timely Response was received and determined to be complete on August 6, 2007.
Complainant submitted a timely Additional Submission on August 13,
2007, in accordance with NAF’s Supplemental Rule 7. Respondent also filed an Additional
Submission, which was received in a timely manner according to the same Supplemental
Rule.
On August 10, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a
Complainant explains that it has registered multiple domain names
bearing the “staffex” and “staffx” names, and currently conducts business
through the <staffex.net> domain name.
However, Complainant has been unable to register the Domain Name because
it was already registered by Respondent on June 25, 1999.
Complainant contends that the registration and use of the Domain Name
is in bad faith, creates a likelihood of confusion with Complainant’s STAFFEX
trademark, and was done primarily for the purpose of selling the Domain Name
for valuable consideration in excess of Respondent’s out-of-pocket costs
related to the Domain Name, and with the intent of preventing Complainant from
reflecting its mark in a corresponding domain name. Complainant’s detailed arguments are as
follows.
Complainant contends that the Domain Name is identical to its STAFFEX
trademark, except for the “.com” extension. Respondent has no rights or legitimate
interests in the Domain Name, is not commonly known by the name Staffex, and
has no affiliation or ties with Complainant.
Complainant alleges that the registration and use of the Domain Name
has been in bad faith because the Domain Name was registered for 8 years
without any active or commercial use. Respondent
has never operated any bona fide
business using the Domain Name nor made any non-commercial or fair use of
it. Instead, Respondent has passively
held the Domain Name for 8 years since its registration in June 1999. There has never been an active website
displayed in connection with the Domain Name, and it currently resolves to a
web page providing links to sites of companies offering products and services
in competition with, or related to, Complainant’s offerings, which may confuse
Internet users into believing that the linked sites are affiliated with or
endorsed by Complainant. This passive
holding for such a long period leads to an inference of registration and use in
bad faith.
Complainant contacted Respondent by e-mail in October 2004 with a
request to purchase the Domain Name.
When Respondent inquired about an offer price, Complainant stated
$300.00, but Respondent responded with the price of $300,000.00, which is an
amount well above Respondent’s out-of-pocket costs for registration of the
Domain Name. Complainant argues that it
is logical to conclude the passive holding of the Domain Name is motivated by a
desire for profit in an exorbitant amount, well in excess of Respondent’s out-of-pocket
expenses. This is evidenced by
Respondent’s unreasonable asking price, which shows Respondent’s bad faith
intent.
This is also compounded by the fact that the Domain Name infringes on Complainant’s
STAFFEX trademark, especially since the Domain Name is virtually identical to
the mark and resolves to a page exhibiting links to sites that most likely
compete with, or at the very least, are in the same industry as Complainant.
Finally, Complainant emphasizes that Respondent renewed the
registration for the Domain Name in 2005, and transferred the registration from
Register.com to GoDaddy.com in 2006, clearly with knowledge that Complainant was
seeking a Federal trademark registration, as was clarified by Complainant in
the e-mail correspondence with Respondent while negotiating a purchase price.
B. Respondent
Respondent has responded, emphasizing that it registered the Domain Name
several years prior to Complainant’s registration of (i) its Federal trademark,
and (ii) its <staffex.net> domain name.
Respondent argues that Complainant had no legal existence prior to 2004,
nor did it own any trademarks or register its <staffex.net> domain name
prior to this time. Instead, Complainant
registered the <staffex.net> domain name some 5 years after Respondent’s
registration of the Domain Name in June 1999.
Respondent states that it chose the word “Staffex” for launch of a
start-up business focused on creating a staffing exchange on the Internet, after
conducting extensive due diligence. In
this respect, Respondent states that a search done in 1999 did not show any
trademarks registered under that name, nor did it yield any results on Internet
search engines. Respondent claims he is
a serial software entrepreneur who has launched several successful organizations
(without naming them), and he invested significant time conceptualizing the
business for <staffex.com> and
seeking to raise funds.
Respondent seeks to discredit Complainant’s evidence, asserting that
Complainant is trying to prove common law rights “based on a couple of invoices,”
and that Complainant has “failed to provide any concrete evidence that cannot
be doctored.” Respondent argues that Complainant
has also failed to provide evidence to prove a legal relationship between
Soochna Resources, Inc, a
Respondent claims that in the e-mail exchanges between the parties, it actually
asked Complainant if Complainant was interested in acquiring the business
assets of <staffex.com>,
but Complainant showed no interest.
Finally, Respondent argues that any content on the <staffex.com> site is not its responsibility because that
content is controlled by the registrar, Go Daddy. Respondent claims that it has neither
endorsed Go Daddy’s conduct nor financially benefited – “the Respondent has not
received any kind of monies or financial rewards or any other monetary
compensation for any Click-through on the site.” Respondent suggests that Complainant should
bring legal action against Go Daddy if it wishes.
B. Additional
Submissions
Complainant: Complainant’s
Additional Submission reiterates many of the arguments made in the Complaint. Complainant re-emphasizes that it first used
its STAFFEX mark in commerce as early as February 12, 1996, prior to Respondent’s
registration of the Domain Name. Complainant
explains that it used STAFFEX as an identifier for its product and services even
though it did not change its company name to Staffex Corporation until 2004. Complainant emphasizes that common law
trademark rights are recognized under the UDRP, even in the absence of
registered rights, and such common law rights accrued to Complainant because it
used STAFFEX in commerce as an identifier of its product/services.
Complainant contends that Respondent’s registration of the Domain Name
with the word “Staffex” – which is not a commonly known word – likely
originated from Complainant, since this name was already being used by Complainant
in the staffing industry where Respondent states it was focusing.
Complainant maintains that Respondent has attacked the credibility of Complainant’s
evidentiary submissions without any basis.
While Complainant states these attacks are unjustified, it then asserts similar
challenges against the evidence provided by Respondent. For example, Complainant asserts that it is
dubious Respondent was involved in the start-up of a business associated with
the Domain Name, since the Domain Name has remained inactive for over 8
years. Further, Complainant argues that
Respondent has provided no evidence in support of its assertion that Respondent
conducted searches prior to registering the Domain Name in 1999. Even if the searches were conducted, they were
not necessarily comprehensive.
Complainant asserts it is likely that if Respondent did conduct adequate
due diligence, it probably learned of Complainant’s STAFFEX mark, as noted
above, which resulted in the bad faith registration of the Domain Name.
Complainant has provided evidence to show that StaffEx Corporation is
the legal successor to Soochna Resources, Inc. – Complainant StaffEx was
continued / domesticated from the company Soochna Resources in
Complainant explains that, with regard to the e-mail exchange between
the parties, it was only after Respondent quoted the price of $300,000 for the
Domain Name that Respondent then in a subsequent e-mail referenced a sale of
business assets. Complainant argues
that, on information and belief, there was no business known as “StaffEx.com,”
so there would have been no business assets to purchase apart from the Domain
Name itself.
Complainant argues that as to the current content associated with the
Domain Name, which includes click-through links to sites offering confusingly
similar goods and services, Respondent should be considered responsible as
owner of the Domain Name registration.
Finally, Complainant argues that it operates a full business under the
STAFFEX mark and has a robust website and operation. Respondent’s bad faith registration and
passive holding of the Domain Name detracts from the Complainant’s business and
prevents Complainant from providing information and services through the Domain
Name.
Respondent: Respondent’s Additional Submission emphasizes
again that Complainant has supplied inadequate evidence of trade show
materials, advertisements, yellow page listings, etc., to demonstrate that the
mark STAFFEX was being used extensively by Complainant prior to 1999 when
Respondent registered the Domain Name. Respondent
challenges whether Complainant had acquired any common law trademark rights at
that early time. Respondent claims that
it registered the Domain Name “based on its own ideas and intellectual capital
and not based on bad faith.”
Respondent contends that the asking price of $300,000 was in
conjunction with the business assets of Staffex.com, not simply for the Domain
Name. Respondent again asserts that it
is not in the business of buying and selling domains, and has never received a
single penny from any searches conducted on the web pages parked by registrars in
connection with the Domain Name.
Instead, one of the key reasons for the retention of the Domain Name is
because it is part of the business originally conceived and developed by Respondent. As to allegations that Respondent fabricated
its evidence in support of the Staffex.com business, Respondent claims that
there were other individuals involved and “any court of law or other authorized
authority is free to record a legal disposition from different parties and
verify the validity of the presentation,” which was attached to Respondent’s
Response.
FINDINGS
Complainant is a
Respondent is an individual who registered the Domain Name in June
1999.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 Panelist finds that Complainant has
rights in the trademark STAFFEX, which is identical to the Domain Name. Complainant’s
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 alleged that
Respondent is not commonly known by the Domain
Name because the WHOIS information lists Respondent as “Amit Pamecha.” Complainant further states that Amit Pamecha
has no affiliation or ties with Complainant.
Complainant
alleges that Respondent has never made any use of the Domain Name since it was registered in June 1999, and
never developed a website that resolves from the Domain Name. Complainant submitted evidence to indicate that
the Domain Name resolves, instead, to a site which displays
hyperlinks, some of which lead to the websites of Complainant’s
competitors.
The Panel finds that the listing of a web page with hyperlinks to services
that compete with Complainant does not constitute a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Jerry Damson, Inc. v.
As a separate point, Respondent
has alleged in response that it registered the Domain Name in order to launch a web-based company that would create a staffing exchange on the
Internet. Respondent thus claims that it
has rights or legitimate interests in respect of the Domain Name, and Respondent has submitted
evidence to demonstrate its intentions to use the Domain Name in this regard. This is evidence which Complainant has
challenged, just as Respondent challenged the evidence submitted by Complainant
in support of its claims, such as having common law rights in the STAFFEX mark
dating back to 1996. Here, the Panel
observes that both parties have sought, without foundation, to discredit the
evidence submitted by the other party.
Both have raised speculative notions that such evidence could have been falsified
or “doctored.”
The Panel makes no evidentiary
findings as to the authenticity of certain evidentiary documents provided by
the parties, in particular, those submitted by Complainant relating to early
use of the STAFFEX mark and the documents showing purported business planning
by Respondent. The UDRP is ill-suited to
resolve such evidentiary issues. The
Panelist also makes no finding as to whether Complainant has proven that Respondent has no rights or legitimate
interests in respect of the Domain Name, instead determining that this case
should be decided based on the element considered below.
In the face of allegations of bad
faith registration and use of the Domain Name, Respondent has alleged that it
did not have any knowledge of Complainant or its STAFFEX mark when it
registered the Domain
Name in June 1999. Respondent claimed,
in this respect, that it conducted extensive due diligence prior to registering
the Domain Name, yet found no notice of Complainant or its mark. The Panelist makes no finding as to the truth
or adequacy of such claimed due diligence.
Complainant changed its company name to “Staffex Corporation,” and developed
a website that resolved from the <staffex.net> domain name in 2004, which
was five years after Respondent registered the Domain Name. Prior to this time, there is no sufficient evidence
that Complainant’s trademark had become well-known through widespread use, even
if some common law rights may have arisen.
The most Complainant has been able to allege in this regard is
that it
is likely Respondent learned of Complainant’s STAFFEX mark, but there
is simply no substantial evidence to show that this would be the case. Even if Complainant
had acquired some common law rights by 1999, there is no evidence that Respondent
had any knowledge of Complainant, and no evidence that Respondent had an intent
to register the Domain Name in order to target Complainant or its
business.
Therefore, while the current use of the Domain Name, which is identical
to Complainant’s mark, could very well amount to trademark infringement under
federal law, in this UDRP case the Panelist must focus on whether there was bad
faith registration and use. The Panelist is unimpressed with the
groundless accusations made by Respondent to discredit Complainant’s evidence. In certain respects, this only caused the
Panelist to question the candor of Respondent.
In addition, the Panelist does not condone the current use of the Domain
Name as it resolves to a parking website – this could lead to a finding of bad
faith current use. Nevertheless, the Panelist finds there is
insufficient evidence to show that Respondent registered the Domain Name, in June 1999,
in bad faith. Moreover, the Panelist, as
noted above, is unwilling to rule that either party’s evidentiary submissions
are falsified or otherwise doctored. See
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Christopher Gibson, Panelist
Dated: August 27, 2007
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