Claim Number: FA0912001296574
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <resumeprowriters.com> and <resumeprowriters.net>, registered with eNom, Inc., and Tucows.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2009.
On December 1, 2009, eNom, Inc. and Tucows confirmed by e-mail to the National Arbitration Forum that the <resumeprowriters.com> and <resumeprowriters.net> domain names are registered with eNom, Inc. and Tucows respectively and that the Respondent is the current registrant of the names. eNom, Inc. and Tucows have verified that Respondent is bound by the eNom, Inc. and Tucows registration agreements 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 December 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2009 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on December 31, 2009.
Complainant’s Additional Submission was received on January 5, 2010. The Additional Submission was received in a timely manner according to Supplemental Rule 7 and was considered by the Panel.
On January 8, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
On January 12, 2010, an Additional Submission was received from Respondent. The Additional Submission was not timely received under Supplemental Rule 7 and was not considered by the Panel.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. The registrant of resumeprowriters.com is Respondent
Resume Pro Writers Guild, c/o Michael Hunt.
The registrant of resumeprowriters.net
is Respondent Mercado. Nevertheless,
both of those domain names, which are at issue in this case (the “Disputed Domains”),
resolve to the same website.
2. Martin Weitzman, managing member of Complainant, opened a business that would offer professional resume drafting services in 1996. He called this business RESUME PRO and registered the domain name resumepro.com in May 1996. He operated the business out of his home from 1996 to 1999 and organized the Complainant limited liability company in 1999 to carry on that business.
3. The Complainant limited
liability company became operational in June 1999 and has used the common law
trademark RESUME PRO in connection with the professional resume writing
business from that time to the present.
Complainant has made extensive use of the RESUME PRO mark (the “Mark”) in
local and online marketing campaigns. Complainant
has consistently advertised its professional resume drafting services and
RESUME PRO mark throughout the
4. Complainant filed an application for registration of the Mark with the U.S. Patent and Trademark Office (“USPTO”) in March 2006 and such registration (No. 3,208,174) was issued on February 13, 2007.
5. Respondent registered the Disputed Domains on October 19, 2006 and September 27, 2007. The fact that the Disputed Domains are identical or very close to Complainant’s PRO RESUME Mark is evidence that it knew of Complainant’s Mark at the time it registered those domains. Respondent offers resume drafting services nearly identical to those offered by Complainant and uses the Disputed Domains to compete with Complainant.
6. The Disputed Domains are confusingly similar to Complainant’s Mark, differing only by eliminating the space between the words and adding the non-distinctive word WRITERS and a generic top-level domain after the Mark. These changes are not sufficient to dispel the confusing similarity.
7. Respondent has not been commonly known by the Disputed Domains prior to the rise of Complainant’s Mark, nor does it carry on any legitimate business at the Disputed Domains, as those names were registered in bad faith with knowledge of Complainant’s rights.
8. Respondent registered the Disputed Domains to confuse Internet users seeking the services of Complainant.
9. Respondent’s registration of the disputed Domains prevents Complainant from reflecting its Mark in them.
10. Complainant has not authorized, licensed or otherwise permitted Respondent to use its Mark.
1. The Response was signed by Laurel Mercado and states on its face that it responds to the statements and allegations in the Complaint. It does not dispute or contest Complainant’s allegations that the two named Respondents are a single entity for purposes of this proceeding.
2. The Disputed Domains are not confusingly similar to Complainant’s Mark. Any confusion that might arise would be easily dismissed because the two websites are very different in appearance, logo design, layout and content, and Respondent offers services that Complainant does not.
3. Complainant has not
demonstrated that it is entitled to exclusive use of the RESUME PRO Mark. Complainant’s own website uses GIL
4. Respondent has been competing fairly with other resume writing service companies, with no intent of misleading or confusing clients by using RESUME and PRO in its domain name.
5. Respondent’s website at the Disputed Domains receives more Internet hits than other domains containing the terms RESUME and PRO, as demonstrated by comparison sheets attached to the Response. The popularity of Respondent’s website is brought about by the fact that it has established its name in the industry by providing quality resume writing services.
6. Respondent did not intentionally
register as a domain name any trademark holder’s mark.
7. Respondent had never heard
of Complainant’s mark until shortly before this dispute was filed, mainly
because while Complainant uses its Mark as a domain name and site identifier,
it also uses GIL
8. The Disputed Domain name terms and trademark are commonly used, not only by Respondent but by others as well, such as resumepromo.com, itresumepro.com, carreerresumepro.com and products and services such as RESUME PRO NEWSLETTER and RESUME PRO software. Complainant does not have exclusive rights to its Mark.
C. Additional Submission by Complainant
1. Dissimilarity in the websites is not relevant to the issues in this proceeding. It is the similarity in domain names that is relevant.
2. Complainant’s registration of its Mark with the USPTO answers Respondent’s assertions that that Mark is generic or descriptive.
3. The domain names listed by Respondent which contain the terms RESUME or PRO are not confusingly similar to Complainant’s Mark in that they do not contain terms identical to those in Complainant’s Mark. PROMO is distinct from PRO. Neither of the domains listed by Respondent that incorporate the Mark competes with Complainant. Also, Complainant challenged the registrant of itresumepro.com and that entity agreed to discontinue its website.
DISCUSSION AND FINDINGS
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the Disputed Domains are effectively controlled by the same or a common person and/or entity, which is operating under differing names. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Disputed Domains both resolve to the same website, and Complainant contends that this constitutes sufficient evidence that they are owned, controlled and registered by the same person or entity. The Response addresses Complainant’s claims and allegations as to both Disputed Domains on the merits, and does not dispute Complainant’s assertion that both are owned, controlled and registered by the same person or entity. From this the Panel finds that both Disputed Domains are indeed owned, controlled and registered by the same person or entity, and determines to proceed with the instant proceedings on that basis.
Merits of the Case
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.
Complainant has established rights
in its RESUME PRO Mark. It began
operation in 1996 under that mark and registered the resumepro.com domain name the same year. The website resolving from that domain name
has been in operation since 1999.
Complainant has consistently advertised its professional resume drafting
services and RESUME PRO mark throughout the
Respondent’s <resumeprowriters.com> and <resumeprowriters.net>
domain names are confusingly similar to Complainant’s RESUME PRO mark. The Disputed Domains remove the space in
Complainant’s mark, and combine the mark with a generic term “writers” and
either the generic top-level domain (“gTLD”) “.com” or “.net.” The removal of a space and the additions of a
generic term and gTLD do not distinguish a disputed domain name from a
complainant’s mark. See Am. Int’l Group,
Inc. v. Domain Admin. Ltd.,
FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that
“spaces are impermissible and a generic top-level domain, such as ‘.com,’
‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed
domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL]
mark.”); see also Warner
Respondent contends that the <resumeprowriters.com> and <resumeprowriters.net> domain names are comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, but such a determination is not necessary under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the Disputed Domains are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Disputed Domains are confusingly similar to the RESUME PRO Mark, in which the Complainant has substantial and demonstrated rights.
If a complainant
makes a prima facie case that the respondent lacks rights and legitimate
interest in the disputed domain name under Policy ¶ 4(a)(ii),
the burden shifts to respondent to show it does have rights or legitimate
interest. See Hanna-
Complainant asserts and the evidence demonstrates that, at least prior to the rise of Complainant’s trademark rights, Respondent was not commonly known by the Disputed Domains. The WHOIS information provided by Complainant shows that the Respondent registered resumeprowriters.com under the name RESUME PRO WRITERS GUILD, and resumeprowriter.net under the name MERCADO. The latter registration does not indicate that the registrant is commonly known by the Disputed Domains. The former registration identifies the registrant by a name similar to the Disputed Domains and thus suggests that Respondent is in fact commonly known by that name. Complainant asserts that this name first appears some seven years after Complainant’s first use of its Mark and was, along with the Disputed Domain itself, adopted in bad faith, with knowledge of Complainant’s rights, to misappropriate Complainant’s goodwill and create a likelihood of confusion with Complainant’s Mark. Such actions cannot create for the Respondent some right or legitimate interest in the Disputed Domains. Complainant also asserts that it has not authorized, licensed, or permitted Respondent to use Complainant’s RESUME PRO mark, and that Respondent is not sponsored by or associated with Complainant. Finally, Claimant asserts and the evidence demonstrates that Respondent is using the Disputed Domains to offer competing services on the resolving website. This use does not confer any right or legitimate interest in the Disputed Domains upon Respondent because it is 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 names pursuant to Policy ¶ 4(c)(iii). Complainant has thus established a prima facie case that Respondent lacks rights and legitimate interest in the Domain Name under Policy ¶ 4(a)(ii), and the burden accordingly shifts to Respondent to show that it does have rights or legitimate interest.
Except for the mere fact of its registration of
resumeprowriters.com under the name
RESUME PRO WRITERS GUILD, Respondent has failed to offer any evidence that it is
commonly known by the Disputed Domains. Tellingly,
Respondent never even stated or claimed that it is or has been commonly known
by that name. It offered no evidence of
what the name RESUME PRO WRITERS GUILD is or represents, i.e., a trade or business name for Michael Hunt (an individual), a
corporate or partnership name, the name of a limited liability company, etc.
It offered no evidence of its use of the name RESUME PRO WRITERS GUILD
in commerce, such as print or other media advertising, correspondence, bank
records, tax records, certificates issued by state or local business regulatory
agencies, leases, telephone records, and the like. If the Respondent were in fact using or were
commonly known by this name those types of records would be readily available,
but no such evidence was offered.
Respondent asserts that it is using the Disputed Domains fairly in connection with its bona fide offering of resume writing services. The problem with this argument is, of course, that the Disputed Domains are confusingly similar to Complainant’s Mark. As other Panels have repeatedly held, a respondent’s use of a disputed domain name to offer competing services on the resolving website is 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 names pursuant to Policy ¶ 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Respondent’s use of the <resumeprowriters.com> and <resumeprowriters.net> domain names offering competing professional resume drafting services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain names Policy ¶ 4(c)(iii).
Respondent’s <resumeprowriters.com> and <resumeprowriters.net>
domain names resolve to a website offering professional resume drafting
services which compete directly with those offered by Complainant.
Respondent benefits commercially from the sale of the professional resume drafting services on the website resolving from the Disputed Domain. Internet users may become confused as to Complainant’s association with and sponsorship of the disputed domain names, and Respondent is attempting to profit from this confusion. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Respondent asserts that it had not heard of Complainant’s Mark until
shortly before the filing of these proceedings, but this rings hollow in light
of the great similarity between the Disputed Domains and Complainant’s
Mark. Not only are the words RESUME and
PRO used in the Disputed Domains, but the order of those words, used as they
are along with the word WRITERS at the end of the string, also supports a
strong inference that Respondent based its names upon the Complainant’s
Mark. The Panel concludes that Respondent
had actual knowledge of Complainant’s Mark when it registered the Disputed Domains. Registration and use of these names by
Respondent with such knowledge also constitutes evidence of bad faith under
Policy ¶ 4(a)(iii).
See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb.
Forum Apr. 10, 2006) (stating that while mere constructive knowledge is
insufficient to support a finding of bad faith, where the circumstances
indicate that the respondent had actual knowledge of the complainant’s mark
when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v.
Accordingly, the Panel finds and determines that Respondent has registered and is using the Disputed Domains in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <resumeprowriters.com> and <resumeprowriters.net> domain names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister
Dated January 20, 2010
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