Cameron & Company, Inc. v. Patrick Dudley
Claim Number: FA1811001818217
Complainant is Cameron & Company, Inc. (“Complainant”), represented by James D. Boyle of Holley Driggs Walch Fine Puzey Stein & Thompson, Nevada, USA. Respondent is Patrick Dudley (“Respondent”), represented by Mark Borghese of Borghese Legal, Ltd., Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cameronmatch.com>, registered with Tucows Domains Inc.
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 November 27, 2018; the Forum received payment on November 27, 2018.
On November 28, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cameronmatch.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 2018 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 November 28, 2018, 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 December 14, 2018.
On December 17, 2018, 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.
Complainant, Cameron & Company, Inc, contends to have rights based on its registration of the mark CAMERON AND COMPANY with the United States Patent and Trademark Office ("USPTO") on July 22, 1997 under No. 2,080,762 in U.S. classes 100, 101 and 102. Complainant also contends to have rights based on its registration of the mark TELECAMERON with USPTO on March 20, 2012 under No. 4,114,801 in U.S. classes 100, 101 and 102 and the mark RNCAMERON with USPTO on November 20, 2018 under No. 5,613,388 in U.S. classes 100, 101 and 102. See Compl., at Attached Annex 1. Complainant asserts to use its marks in connection to employment staffing and recruitment services, particularly in the pharmacy and healthcare field, and that its marks are well-known. Complainant considers the disputed domain name <cameronmatch.com> to be confusingly similar to Complainant’s marks.
According to Complainant, Respondent lacks rights and legitimate interests in <cameronmatch.com>. Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as Respondent uses the domain name to offer identical services as Complainant, namely employment placing services for employers seeking pharmacists, pharmacy technicians and nurses. See Compl., at Attached Annex 2. Further, according to Complainant, Respondent has not been commonly known by the disputed domain name and is in no way affiliated with or licensed by Complainant. Lastly, Complainant submits that Respondent’s principal intention is to trade off on the goodwill associated with its well-known marks.
Finally, Complainant maintains that Respondent registered and uses the disputed domain name <cameronmatch.com> in bad faith. Complainant maintains that Respondent had, at a minimum, constructive notice of Complainant and its well-known marks and that Respondent registered and used the disputed domain name with the sole intent to mislead consumers into believing that Respondent and its services are somehow affiliated or associated with Complainant or that Complainant sponsors or endorses Respondent. See Compl., at Attached Annex 3.
Respondent claims to be the owner of Cameron Search Staffing LLC, a Texas limited partnership named after Respondent’s oldest son, which previously operated under the name Cameron Tucker Consulting until 2010. Respondent contends that his company has been in the recruitment and staffing industry for more than 22 years and that he has used the name CAMERON as part of his business name since 2001. See Resp., at Attached Annexes 1, 4 and 5. Respondent further maintains that he has used the unregistered service marks CAMERON MATCH and MATCHABILITY in connection to its staffing business since 2010. See Resp., at Attached Annex 3.
Respondent does not consider the disputed domain name <cameronmatch.com> to be identical or confusingly similar to Complainant’s CAMERON AND COMPANY, TELECAMERON or RNCAMERON marks as Complainant’s marks do not appear in the disputed domain name. According to Respondent, the disputed domain name merely consists of a combination of the personal name “Cameron”, which Respondent has used for many years, and a shortened version of the term “Matchability”, which Respondent claimed to have coined approximately since 2010.
Respondent further maintains to possess rights and legitimate interests in the disputed domain name as he is commonly known by the disputed domain name and has used the domain name in connection with a bona fide offering of recruitment services since the registration of the domain name on October 14, 2009. See Resp. at Attached Annexes 1, 2 and 5. Respondent also asserts that Complainant fails to make out a prima facie case to evidence that Respondent has no rights or legitimate interests in the disputed domain name, especially considering the substantial delay in Complainant taking any action against Respondent.
Finally, Respondent submits that he did not register and use the disputed domain name <cameronmatch.com> in bad faith. Respondent asserts to have registered the disputed domain name for his own bona fide services connected to his staffing and recruitment business. Respondent contends that the use of the disputed domain name does not compete with Complainant’s use of the CAMERON AND COMPANY mark, as Respondent has never provided staffing services for licensed pharmacists and certified pharmacy technicians. See Resp. at Attached Annexes 1 and 6. Lastly, Respondent claims that he did not register or use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website as Respondent has been in the staffing industry for more than 22 years and until this dispute has never heard of Cameron & Company, Inc. or encountered any of its service marks. See Resp. at Attached Annex 1.
Complainant, Cameron & Company, Inc., is a staffing and recruitment company specialized in providing staffing services in the pharmacy and healthcare sector. In connection with this business, Complainant registered the CAMERON AND COMPANY mark with the USPTO on July 22, 1997 under No. 2,080,762 in U.S. classes 100, 101 and 102. Complainant also registered the mark TELECAMERON with USPTO on March 20, 2012 under No. 4,114,801 in U.S. classes 100, 101 and 102 and the mark RNCAMERON with USPTO on November 20, 2018 under No. 5,613,388 in U.S. classes 100, 101 and 102. See Compl., at Attached Annex 1.
Respondent registered the disputed domain name <cameronmatch.com> on October 14, 2009.
Respondent's disputed domain name resolves to a website which is used for providing and promoting the recruitment and staffing services of Cameron Search Staffing. The website connected to the disputed domain name specifically refers to the concept “Matchability”, which it describes as “a quick, but highly effective questionnaire that helps zero in on the ten Matchability factors we’ve found most successful in matching employees to companies.” See Compl., at Attached Annex 3.
Complainant claims to have contacted Respondent several times before the filing of the Complaint but provides no evidence to substantiate this assertion.
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 shows to have rights in the CAMERON AND COMPANY, TELECAMERON and RNCAMERON marks through registration of the marks with the USPTO (e.g. Reg. No. 2,080,762, registered July 22, 1997 in U.S. classes 100, 101 and 102). See Compl., at Attached Annex 1. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy¶4(a)(i) and its vested interests in a mark…. Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy¶4(a)(i).”).
It is well accepted that Policy¶4(a)(i) functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s mark(s) and the disputed domain name. Complainant claims that the disputed domain name <cameronmatch.com> is confusingly similar to Complainant's “CAMERON marks”. Although Complainant’s CAMERON AND COMPANY, TELECAMERON and RNCAMERON marks do not consist exclusively of the sign “CAMERON” and are not as such incorporated in the disputed domain name, the Panel finds that “CAMERON” is the dominant feature of Complainant’s marks and that this dominant feature is directly recognizable in the disputed domain name. See section 1.7. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Additionally, the disputed domain name adds the non-distinctive text “match” to this dominant feature of Complainant’s marks. The Panel is of the opinion that the mere addition of non-distinctive text to the dominant element of Complainant’s marks constitutes confusing similarity, as set out in Policy¶4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); See also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Although the above is sufficient with respect to Policy¶4(a)(i), the Panel notes that the term “CAMERON” is also a common personal name that appears unrelated to Complainant’s CAMERON AND COMPANY, TELECAMERON and RNCAMERON marks.
The top-level domain is usually considered to be irrelevant in assessing identity or confusing similarity (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮, FA 1747411 (Forum October 3, 2017) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) As a result, the addition of the “.com,” gTLD in the disputed domain name can be disregarded for the finding of identity or confusing similarity.
In view of the above, this Panel finds that the disputed domain name is confusingly similar to Complainant's CAMERON AND COMPANY, TELECAMERON and RNCAMERON marks for the purposes of Policy¶4(a)(i).
Complainant asserts that Respondent is not commonly known as the <cameronmatch.com> domain name, nor is Respondent in possession of authorisations or licensing rights that would allow him to use the “CAMERON marks” in domain names. In addition, Complainant claims that Respondent had constructive knowledge of Complainant’s mark at the time of registration of the disputed domain name and that Respondent is using the domain name to offer services that compete with and trade off on the goodwill of the services offered under the “CAMERON marks”.
Respondent claims that he is indeed commonly known by the <cameronmatch.com> domain name, as Respondent has used the domain name in connection with his recruitment and staffing business since October 2009. Respondent further contends that he has used and continues to use the disputed domain name in connection with a bona fide offering of recruitment and staffing services provided by his company under the name Cameron Search and Staffing.
The Panel finds that Respondent has provided several annexes that demonstrate that Respondent has used the disputed domain name in connection to a legitimate business activity conducted under the names Cameron Tucker Consulting and Cameron Search and Staffing since 2009. See Resp. at Attached Annexes 1-5. As Respondent has used the disputed domain name for many years in connection with its legitimate recruitment and staffing business, the Panel determines that Respondent is indeed commonly known by the disputed domain name and that he has used the domain name in connection with a bona fide offering of services. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name); See also Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy 4(c)(i).”); See also Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name).
Complainant alleges that the principal purpose of Respondent for registering and using the disputed domain name is to trade off on the goodwill associated with Complainant’s marks. However, the Panel finds that Complainant fails to adequately substantiate these allegations with evidence proving that Respondent’s use of the disputed domain name could cause customer confusion or that Respondent has engaged in directly competitive conduct with Complainant. Complainant only provides a copy of an email sent by an unknown third party which contains a Google link allegedly referring to Respondent’s business. Such evidence cannot be considered adequate to determine that Respondent has registered the disputed domain name mainly for the purpose of trading off on the goodwill associated with Complainant’s marks.
The Panel also 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 universal 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 mark. 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 universal character of the dominant element of Complainant’s CAMERON AND COMPANY, TELECAMERON and RNCAMERON marks, “CAMERON” being a common personal name, the Panel finds that Respondent may indeed have a right to register and use the <cameronmatch.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 marks.
Having no other elements showing the lack of legitimate interests in the disputed domain name, the Panel finds that Complainant has failed to show the absence of rights or legitimate interest.
Finally, the Panel notes that the Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Cases involving disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related U.S. law issues are 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 is not required to make a ruling on this element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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).
Since the Panel concludes that Respondent has rights or legitimate interests in the <cameronmatch.com> domain name pursuant to Policy 4(a)(ii), it can be determined that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy¶4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); See also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
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 <cameronmatch.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion, Panelist
Dated: December 26, 2018
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