CareerBuilder LLC v 123 Domains Ltd [2008] DRS 5323 (29 February 2008)

Nominet UK Dispute Resolution Service

DRS Number 05323

Decision of Independent Expert

1. Parties

Complainant: CareerBuilder, LLC

Country: US

Respondent: 123 Domains Limited

Country: ES

2. Domain Name

<careebuilder.co.uk> (the “Domain Name”)

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 14
December 2007. Nominet validated the complaint on 19 December 2007 and
transmitted a copy of the complaint to the Respondent. No response was received
from Respondent by the due date of 16 January 2008. Nominet wrote to both parties
indicating that no response had been received. On 5 February 2008 the
Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to
paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”).

The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason
why I cannot properly accept the invitation to act as Expert in this case and has
further confirmed that I know of no matters which ought to be drawn to the attention
of the parties, which might appear to call into question my independence and/or
impartiality. The undersigned, Christopher Gibson, was appointed as Expert in this
case on 8 February 2008.

4. The Facts

The Complainant is CareerBuilder LLC, a company that uses the name and trade
mark CAREERBUILDER for its business of providing online employment recruiting
services. The Complainant has submitted certificates to show that it is the owner of
the registered trade mark, CAREERBUILDER (the “Mark”), in various countries
including in the United Kingdom, Unites States, Mexico, Canada and other countries
in the European Community. Complainant operates its business on the Internet
through websites at www.careerbuilder.com and www.careerbuilder.co.uk, with the
domain names for these sites having been registered in 1996 and 2002, respectively.
Complainant owns additional domain names including: <careerbuilder.org>,

<careerbuilderinc.com>, <careerbuilderit.com>, <careerbuilderpsa.com>,
<careerbuildermail.com>, and <careerbuildernetwork.info>.

From the WHOIS records, the Domain Name <careebuilder.co.uk> was registered for
the Respondent, 123 Domains Limited, on 6 December 2006. The URL for the
Domain Name, www.careebuilder.co.uk, resolves to a web site containing links to
sites providing employment and job listing services.

5. The Parties’ Contentions

Complainant’s Complaint

The Complainant contends that the Domain Name in dispute is identical or similar to
a name or mark in which it has Rights and that the Domain Name in the hands of the
Respondent is an Abusive Registration.

Complainant Rights:

The Complainant asserts that it has Rights in a name and mark which is identical or
similar to the Domain Name. As noted above, the Complainant has provided
documentary evidence of Rights in the Mark, CAREERBUILDER, both in the United
Kingdom and elsewhere. The Complainant’s submits that its trade mark rights, dating
from 1996, pre-date the Respondent’s registration of the Domain Name in December
2006. The Complainant states that during the last eleven years it has expended
significant time, money and effort to establish public recognition of its Mark, so that
the Mark will identify Complainant as a provider of quality services in the employment
recruitment industry. As result of these efforts, Complainant asserts that its Mark has
become one of its most valuable assets. Complainant has established substantial
goodwill in the Mark through promotion, advertising and use of the Mark and, as a
result, it has become distinctive and well recognised in employment recruiting
throughout much of the world.

The Complainant asserts that the Domain Name is confusingly similar to its name
and Mark, explaining that they are essentially identical, visually, phonetically and in
connotation and commercial impression. The Domain Name features a slight
variation that differs by the omission of the letter "r" and can be considered as a so-
called typographical error case. In Complainant’s view, this misspelling is designed to
take advantage of Internet users who either mistype or do not know the correct
spelling of Complainant’s Mark. Thus, use of the Domain Name is likely to confuse
the public into believing that the Domain Name is registered to, operated or
authorised by, or otherwise connected with, the Complainant, and that services
offered at the website associated with the Domain Name are connected with, or
endorsed by, the Complainant. The Complainant states that Respondent has no
rights or legitimate interests in the Domain Name, has no connection or affiliation with
Complainant, and has received no license or consent to use the Complainant’s Mark
in the Domain Name or in any other manner.

Abusive Registration:

The Complainant contends that the Respondent was aware of the Complainant when
it registered the Domain Name, as evidenced by the fact that Respondent’s website
has included at least one link to the Complainant’s websites at
www.careerbuilder.co.uk and www.careerbuilder.com. The Complainant further
asserts that Respondent knew of and sought to capitalise from the repute and value
of the Complainant’s Mark and the high traffic volume to the Complainant’s site at

www.careerbuilder.co.uk, by creating a website using the Domain Name that
contains hyperlinks to online employment-related search engines and other third
party websites in direct competition with Complainant. By registering the Domain
Name and misdirecting users who are seeking Complainant’s website, the
Respondent is making a clear attempt to leverage use of the Complainant’s Mark,
reaping commercial gain for the Respondent and/or for the benefit of competing on-
line recruitment services companies which are not sponsored or endorsed by or
affiliated with Complainant. Diverting Internet users to such third party websites for
commercial advantage constitutes bad faith use of the Domain Name. The
Complainant also contends that the Respondent’s use of the Domain Name dilutes
the distinctive qualities and goodwill associated with the Mark.

The Complainant states that it has already successfully prosecuted claims against
previous owners of similar domain names. Examples of these cases include:
CareerBuilder, LLC v. NextS Business Development; Case No. D2005-1117, (WIPO
December 12, 2005) (transferring <careersbuilder.net> to Complainant);
CareerBuilder, LLC v. Names for sale, Case No. D2005-0186, (WIPO April 20, 2005)
(transferring <careersbuilder.com> to Complainant); CareerBuilder LLC v. Karen
Vithe, Case No. D2004-0370, (WIPO August 3, 2004), (transferring <careers-
builder.com> to Complainant); CareerBuilder, Inc. v. John Zuccarini, Case No.
D2002-0282, (WIPO May 21, 2002) (transferring <carreerbuilder.com> to
Complainant); CareerBuilder, LLC. v. Azra Khan, Case No. D2003-0493, (WIPO
August 5, 2003) (transferring <careeerbuilder.com> to Complainant); CareerBuilder,
Inc. v. Amcore & Company For sale domains $250 or best offer, Case No. D2003-
0872, (WIPO December 18, 2003) (transferring <careerbulder.com> to Complainant);
CareerBuilder, Inc. v. John Morgan, Case No. D2003-0907, (WIPO January 13,
2004) (transferring <carerbuilder.com> to Complainant).

The Complainant notified Respondent of the complainant’s rights on 1 August 2007,
when it sent a cease and desist letter to the Respondent. The letter informed
Respondent that Complainant had existing rights in the Mark and that Respondent
had registered the confusingly similar Domain Name. Complainant requested
undertakings from Respondent, including immediately ceasing to use the Domain
Name. The Complainant also demanded that Respondent execute a deed of
assignment in relation to the Domain Name. The deadline for replying to the letter
was 15 August 2007 and the Respondent never replied. The Complainant contends
that the Respondent’s refusal to respond and/or relinquish the Domain Name after
receiving notice of the alleged infringement of Complainant’s Mark demonstrates that
Respondent has no intention of respecting or recognising Complainant’s Mark or its
rights, thereby demonstrating that Respondent is acting in bad faith.

Respondent’s Response

The Respondent has not responded, and therefore has raised no challenge to any of
the facts and statements submitted by the Complainant.

6. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires
the Complainant to prove on the balance of probabilities that both elements of the
test set out in paragraph 2(a) are present:

i. the Complainant has Rights in respect of a name or mark which is identical or
similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

The Complainant has submitted documentary evidence to establish that it has Rights
in its CAREERBUILDER name and Mark, which pre-date the Respondent’s
registration of the Domain Name. The Domain Name contains the distinctive part of
the Complainant’s Mark, omitting only the single letter "r". The Mark
CAREERBUILDER is distinctive both in the placement of the words “career” and
“builder” together and through its acquired goodwill and reputation in relation to
online employment recruiting services. The Domain Name is therefore similar to a
name or mark in which the Complainant has Rights. The Complainant has
established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the
Respondent, paragraph 1 of the DRS Policy defines “Abusive Registration” as:-
“a Domain Name which either:

i. was registered or otherwise acquired in a manner, which at the time

when the registration or acquisition took place, took unfair advantage of or
was unfairly detrimental to the Complainant’s Rights; or

ii. has been used in a manner, which took unfair advantage of or was

unfairly detrimental to the Complainant’s Rights.”

The Expert should take into account all relevant facts and circumstances in
determining whether the Domain Name is an Abusive Registration.

The Expert is persuaded by the Complainant submissions that the Domain Name
registration and use is abusive. First, the Expert agrees with the Complainant’s
contention that the Respondent was aware of the Complainant’s name and Mark at
the time it registered the Domain Name in 2006. By that time, the Complainant had
acquired reputation and goodwill its Mark, which had been used widely in commerce
since 1996. Moreover, the Domain Name is virtually identical to the Complainant’s
Mark, with the omission only of the single letter “r” where it would normally be placed
if “careebuilder” was spelled correctly.

Second, the Domain Name resolves to a web site with links to other third-party
search engines and sites in direct competition with the Complainant’s business of
providing on-line recruitment services. The Respondent’s site is clearly taking
advantage of the Complainant’s reputation and goodwill developed in on-line
commerce. When considered in view of the circumstances discussed above, the
Expert finds that Respondent registered and has used the Domain Name as an
Abusive Registration.

Accordingly, the Panel finds on the balance of probabilities that the Domain Name, in
the hands of the Respondent, is an Abusive Registration

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> CareerBuilder LLC v 123 Domains Ltd [2008] DRS 5323 (29 February 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5323.html Cite as: [2008] DRS 5323



	Nominet UK Dispute Resolution Service DRS Number 05323 Decision of Independent Expert 1. Parties Complainant: CareerBuilder, LLC Country: US Respondent: 123 Domains Limited Country: ES

	2. Domain Name <careebuilder.co.uk> (the “Domain Name”) 3. Procedural Background The complaint of the Complainant was entered in the Nominet system on 14 December 2007. Nominet validated the complaint on 19 December 2007 and transmitted a copy of the complaint to the Respondent. No response was received from Respondent by the due date of 16 January 2008. Nominet wrote to both parties indicating that no response had been received. On 5 February 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”). The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. The undersigned, Christopher Gibson, was appointed as Expert in this case on 8 February 2008. 4. The Facts The Complainant is CareerBuilder LLC, a company that uses the name and trade mark CAREERBUILDER for its business of providing online employment recruiting services. The Complainant has submitted certificates to show that it is the owner of the registered trade mark, CAREERBUILDER (the “Mark”), in various countries including in the United Kingdom, Unites States, Mexico, Canada and other countries in the European Community. Complainant operates its business on the Internet through websites at www.careerbuilder.com and www.careerbuilder.co.uk, with the domain names for these sites having been registered in 1996 and 2002, respectively. Complainant owns additional domain names including: <careerbuilder.org>,



	7. Decision

	The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the Domain Name, <careebuilder.co.uk>, be transferred to the Complainant.

	Christopher Gibson 29 February 2008

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