Jobvertise, Inc. v. Oscar Moreno / Diversity Job Seekers, LLC
Claim Number: FA1507001629481
Complainant is Jobvertise, Inc. (“Complainant”), represented by Steven L. Rinehart, Salt Lake City, Utah, USA. Respondent is Oscar Moreno / Diversity Job Seekers, LLC (“Respondent”), represented by Daniel H. Bliss of Howard & Howard Attorneys PLLC, Las Vegas, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jobertising.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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 17, 2015.
On July 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <jobertising.com> is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the disputed domain 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 July 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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 firstname.lastname@example.org. Also on July 21, 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 August 10, 2015.
Complainant’s Additional Submission was received by the Forum on August 17, 2015 and deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received by the Forum on August 21, 2015 and deemed to be in compliance with Supplemental Rule 7.
On August 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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 has used the trademark JOBVERTISE since 1998 to provide services concerning employment and personnel placement by means of the website to which the domain name <jobvertise.com> resolves to.
b. Complainant has the trademark JOBVERTISE registered before the United States Patent and Trademark Office (“USPTO”) to identify: “On-line personnel placement and recruitment services”, since July 24, 2001, with registration No. 2471557.
c. Complainant’s trademark JOBVERTISE is distinctive and well-known in the United States of America.
d. Respondent’s domain name has been held passively since 2007 until 2010 when Respondent began hosting website offering competing services to those of Complainant.
e. Respondent’s domain name resolves to a website impersonating Complainant.
f. Respondent has not been commonly known by the disputed domain name.
g. Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademark or the disputed domain name.
h. Respondent intentionally attracts Internet users for commercial gain.
a. Contrary to Complainant’s statements, Respondent has registered and uses the disputed domain name since June 6, 2007 to provide employment agency services, organizing and conducting job fairs, college fairs, college exhibitions, among other related activities.
b. Respondent had the trademark registration JOBERTISING.COM since February 12, 2008 which was first used on June 5, 2007, and filed before the USPTO to identify: “Personnel placement and recruitment”, services of international class 35, application that proceeded to registration under No. 3381338.
c. Complainant was aware of Respondent’s trademark JOBERTISING.COM due to constructive notice, since at least 2008, with Respondent’s trademark registration.
d. Complainant has not provided any evidence of bad faith registration of the disputed domain name.
e. The disputed domain name is not being used to divert traffic intended for Complainant, fact stated but not proven by Complainant in its Complaint.
f. Respondent’s domain name is not resolving to a website impersonating Complainant’s services.
g. Respondent registered the disputed domain name to conduct a legitimate business.
h. Respondent is not using Complainant’s trademark, Respondent is using its own registered trademark.
i. Respondent used the disputed domain name before any notice of the dispute, regarding a bona fide offering of services.
j. Complainant’s trademark is the combination of two commonly used terms “job” and “advertise” and Complainant has submitted no evidence to establish fame, strong meaning or secondary meaning associated with its trademark.
C. Additional Submissions
i. The similarity between the logos is undeniable since both signs substitute the letter “o” for a globe.
ii. The language from the Response copies what it is stated in the Complaint.
iii. Respondent has no registered trademark.
iv. Respondent only has a pending trademark application, while Complainant has a trademark registration.
i. The logos of Complainant and Respondent are not relevant to this proceeding. The proceeding is based on a comparison of the domain names and not the logos of Complainant and Respondent.
ii. The fact that both Complainant and Respondent use a globe in their logo is merely coincidental and not evidence of bad faith. In fact, a search of the USPTO records of pending applications and registered trademarks shows 142 uses of a globe in trademarks having goods and services in a similar category.
iii. Respondent has been using the Jobertising.com website on a continuous and uninterrupted basis since 2007 and the marks have coexisted for that entire period of time.
iv. Contrary to Complainant’s contentions, the JOBERTISING.COM Mark is distinctive and well-known in the United States.
A. Complainant has the trademark JOBVERTISE registered before the United States Patent and Trademark Office (USPTO) to identify: “On-line personnel placement and recruitment services”, since July 24, 2001, with registration No. 2471557.
B. Respondent had the trademark registration JOBERTISING.COM since February 12, 2008 which was first used on June 5, 2007, and filed before the USPTO to identify: “Personnel placement and recruitment”, services of international class 35, application that proceeded to registration under No. 3381338.
C. Respondent registered and uses the disputed domain name since June 6, 2007 to provide employment agency services, organizing and conducting job fairs, college fairs, college exhibitions, among other related activities.
D. Complainant failed to prove its assertions regarding lack of rights or legitimate interests and the consequent 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 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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <jobertising.com> because of the following: i) Respondent has not been authorized by Complainant to use its trademark in any manner; ii) Respondent registered and uses the disputed domain name to infringe Complainant’s rights in its trademark and to trade off Complainant’s good will; iii) Respondent’s domain name resolves to a website impersonating Complainant; iv) Respondent has not been commonly known by the disputed domain name; and v) Respondent intentionally attracts Internet users for commercial gain.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent established its rights and legitimate interest in the disputed domain name, as follows:
(i) Respondent acquired the disputed domain name in 2007 and has continuously used it to provide employment related services (Exhibits D and G to the Response). Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) Respondent’s uses the disputed domain name in connection with a bona fide offering of services, as the employment services is in principle a legitimate business. Furthermore, Complainant has not provided any evidence to the contrary.
(iii) Respondent has been commonly known by the disputed domain name, since at least 2007. Moreover, Respondent acquired a trademark registration comprising the disputed domain name in June 18, 2008.
Even if even if no trademark right was acquired, Respondent would still have legitimate interest on the disputed domain name, despite of Complainant’s argument, according to its Additional Submission.
Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as the registration of the disputed domain name is an attempt to mislead Complainant’s consumers and to benefit from the good will and notoriety of Complainant’s trademark. Moreover, the disputed domain name resolves to a website impersonating Complainant’s services. The disputed domain name prevents Complainant from reflecting its trademark in the corresponding domain name.
The Panel finds that despite Complainant’s allegation regarding secondary meaning, well-known status and notoriety, no evidence was filed on that regard. Hence, the Panel cannot consider that Complainant’s trademark has a higher level of distinctiveness or protection, since all the aforementioned standings have to be duly proven.
Moreover, the Panel finds that Respondent owned a trademark registration identical to the disputed domain name to which Complainant had the opportunity to oppose. Nonetheless, no opposition was filed against Respondent trademark registration.
Both Complainant’s and Respondent’s trademarks have peacefully coexisted for at least seven (7) years. In addition, Complainant should have known of Respondent’s trademark in 2008, when the USPTO granted Respondent’s trademark registration.
Hence, a claim brought after eight (8) years of domain usage by Respondent has a higher burden for Complainant when proving the bad faith registration element. However, in this case, Complainant did not file any convincing evidence on that regard.
Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name; or (ii) Respondent registered the disputed domain name for the purpose of depriving Complainant of use of the trademark online, and benefiting financially from the sale of competitor’s products; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark.
On the opposite, Respondent acquired the disputed domain name to reflect its own trademark.
Respondent is not intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's trademark. Respondent is simply providing a valid and legitimate service to consumers based upon its trademark rights.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case. Since Complainant has not satisfied paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is no need for the Panel to address paragraph 4(a)(i) of the Policy.
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 disputed domain name <jobertising.com> REMAIN WITH Respondent.
Fernando Triana, Esq., Panelist
Dated: August 24, 2015
COLO 1308 0960 70243/SÁG
 See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
 See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
 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 the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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