Nominet UK Dispute Resolution Service

DRS Complaint No 05859

Decision of Independent Expert

1.	Parties

Complainant:	CareerBuilder, LLC.
Country:	US

Respondent:	Career Builder Ltd
Country:	GB

2.	Domain Name

career-builder.co.uk

3.	Procedural Background

The Complaint was validated by Nominet on 21 July 2008 and sent to the Respondent on the 21 July 2008 by both post and email.  Nominet informed the Respondent that it had 15 working days, i.e. until 12 August 2008 to respond to the Complaint.

By 14 August 2008, no formal Response having been received from the Respondent, Nominet wrote to the Complainant’s representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision.  I responded to Nominet confirming that I was able to provide a decision.  

The matter was thereafter duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a response to the Complaint.  From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent using the contact details held on Nominet’s Register.  

When registering a .uk domain name applicants agree to be bound by Nominet’s Terms and Conditions.  Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

“4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register”

In addition paragraph 2(e) of the Dispute Resolution Service Procedure (the “Procedure”) states that:- 

“e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.     if sent by facsimile, on the date transmitted; or
ii.    if sent by first class post, on the second Day after posting; or 
iii.   if sent via the Internet, on the date that the communication was transmitted;
iv.  and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.” 

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  

I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in Paragraph 15 that:-

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.”

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision. 

I will draw such inferences from the Respondent’s failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5.	The Facts

The Complainant is an online employment agency, and provider of related services.  It has traded continuously under the mark CAREERBUILDER since 1996, and is the owner of various trade mark registrations for that mark or similar marks in the US, Europe, Mexico and Canada which date back to 1997 in the case of the US and 2000 in the case of Europe.  It is also the registrant of a number of domain names, including <careerbuilder.com> and <careerbuilder.co.uk>.

The Domain Name was registered on 21 November 2006, and at the time of the complaint was directed to a page which indicated that a site was under construction.   

The Complainant’s legal representatives wrote a letter of complaint to the Respondent on 12 June 2008, but the letter was returned undelivered by the Royal Mail.

The Parties’ Contentions

Complainant

The Complainant asserts that it has Rights in respect of a mark which is confusingly similar to the Domain Name and that the Domain Name in the hands of the Respondent is an “Abusive Registration” as defined in the Dispute Resolution Service Policy (the “Policy”).

In support of its claim to Rights, the Complainant asserts the extent of its use of the mark, and also the various trade mark registrations that it owns. 

In support of the claim that the Domain Name is an Abusive Registrations the Complainant says that -   

i)	The Domain name is confusingly similar to the Complainant’s mark.

ii)	The Domain Name is virtually identical to the Complainant’s mark.

iii)	The Respondent has registered the Domain Name as a misspelling of the Complainant’s mark with the intention of taking advantage of the Complainant’s mark.

iv)	The registration and use of the Domain Name is an infringement of the Complainant’s rights in the registered marks and passing off.

v)	The Respondent has no legitimate rights in the Domain Name and has not been authorised to use the mark by the Complainant.

vi)	The Domain Name was registered in bad faith because the Respondent knew of the Complainant’s rights, and is seeking to capitalise on the repute of the mark and the goodwill therein.

vii)	The registration and use of the mark will dilute the distinctiveness of the mark and the goodwill therein.

viii)	The Complainant has been successful in similar complaints against third parties including those relating to .co.uk domain names, namely DRS Cases 05323 and 05322. 

Respondent

As indicated above, the Respondent has not filed a Response.
 
6.	Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i)	it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities.  It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant’s Rights

The DRS Policy defines Rights as follows –

“Rights includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

The Complainant, is the proprietor of various registrations for the trade mark ‘CAREERBUILDER’ or similar and has used that mark continuously since 1996.  It is clear to me that the Complainant therefore qualifies as having the necessary Rights in that mark.  

The Policy requires such Rights to be in a name or mark identical or similar to the Disputed Domain Name.  The Domain Name is <career-builder.co.uk>  For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix.  The comparison is therefore between ‘CAREERBUILDER’ on the one hand, and ‘CAREER-BUILDER’ on the other.  In my opinion the addition of the hyphen makes little or no difference to the comparison and I therefore determine that the Complainant has established that it has Rights in a mark similar to the disputed Domain Name.   

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy defines an 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”

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.  

In the circumstances as described by the Complainant, and in the absence of any Response from the Respondent contradicting the matters referred to in the Complaint, I am of the opinion that the likely reason that the Respondent registered the Domain Name was that it intended to disrupt the business of the complainant, contrary to (para 3(a)(i)(c) of the DRS Policy, by attracting internet users away from the Complainant’s website, to the Respondent’s site.  I am not aware of any legitimate reason that the Respondent could have for doing so.  

The Domain Name is a relatively unlikely combination of words for the Respondent to choose, and I consider it more likely that the Respondent was aware of the Complainant’s use of its mark prior to registering the Domain Name, and that it registered the Domain Name for the purpose indicated above in the full knowledge of the Complainant’s use and rights.

7.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name and mark which is similar to the Domain Name <career-builder.co.uk>, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds. 

The disputed Domain Name <career-builder.co.uk> should be transferred to the Complainant.

Simon Chapman

18 September 2008