WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benchmark Staffing, Inc. v. Benchmark Jobs, LLC
Case No. D2001-0663
1. The Parties
The Complainant is Benchmark Staffing, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in Menlo Park, California, USA.
The Respondent is BenchMark Jobs, LLC, with place of business in Fort Lauderdale, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on May 14, 2001, and by courier mail received by WIPO on May 18, 2001. Payment of the requisite filing fees accompanied the courier mailing. On May 18, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on May 21, 2001).
(b) Following notice of a formal filing deficiency, WIPO received via e-mail from Complainant an amendment to the complaint on May 21, 2001, and WIPO received such amendment to the complaint via courier mail on May 23, 2001.
(c) On May 28, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
(d) On June 14, 2001, Respondent�s response was received via e-mail by WIPO, and on June 19, 2001, Respondent�s response was received via courier mail by WIPO. Respondent also transmitted its response to Complainant.
(e) On June 22, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 22, 2001, the undersigned hand delivered the executed Statement and Declaration to WIPO.
(f) On June 25, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 8, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.
(g) Following a request from the Panel, WIPO notified the parties on July 9, 2001, that the projected date for a decision in this matter was extended until July 13, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the typed drawing service mark "BENCHMARK STAFFING SERVICES" on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 2054451, dated April 22, 1997. (Footnote 1) Such registration is in International Class (IC) 35, covering "personnel placement and recruitment services". The aforesaid USPTO trademark and service registration claims a date of first use in commerce of October 8, 1995, and disclaims use of "STAFFING SERVICES" apart from the mark as shown. The aforesaid registration is valid and subsisting. (Complaint, para. 12.C & Annex 3)
Complainant has submitted applications for registration of the typed drawing service marks "BENCHMARK" and "BENCHMARK SPECIALIZED PRODUCTION STAFFING" on the Principal Register of the USPTO. Each of these applications was filed on August 2, 2000, and is active. (Id., Annexes 4 & 5)
Complainant maintains an active commercial Internet website at address (URL) .
Complainant is the wholly owned subsidiary of a publicly held corporation, Robert Half International Inc. The parent company provides professional staffing to businesses, and has over 330 offices worldwide. Complainant provides temporary staffing in the areas of manufacturing, distribution and production. It has seventeen offices, and its total revenues for 1997-2000 were in excess of $44 million.
According to the registrar�s verification response to WIPO, dated May 21, 2001, "Benchmark Jobs, LLC" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Koenigsberg, Jay". According to a Network Solutions� WHOIS database record furnished by Complainant, the record for the disputed domain name was created on August 30, 2000, and was last updated on October 13, 2000 (Complaint, Annex 1).
The disputed domain name is presently used to redirect Internet users to a website at address , which website home page is headed "Interactive Staffing". The website features, inter alia, promotion of staffing services for call center, medical and technical staffing areas. (Id., para. 12.O-P & Annex 10, and Panel visit of July 11, 2001)
Complainant (through counsel) initially contacted Respondent by letter of February 23, 2001, both in respect to its use of the name "BenchMark Jobs" for its business operations, and in respect to the disputed domain name (Complaint, para. 12.I & Annex 7). According to Complainant, Respondent agreed to and did change the name of its business to "Interactive Staffing", but refused to agree to cease use of the disputed domain name, and to transfer it to Complainant (id., para. 12.J-K & Annex 8). According to a sworn declaration by Complainant�s counsel, during a telephone call placed by Complainant on March 6, 2001, Respondent offered to sell the disputed domain name to Complainant for $5,000. Such offer to sell was repeated on March 22, 2001 (Declaration of Andrew Baum, id., Annex 8).
Respondent asserts that it continues to operate a business under the name "BenchMark Jobs", although it has provided no supporting evidence for this assertion (Response, para. 17). Although Respondent does not specifically assert that it did not offer to sell the disputed domain name to Complainant, it "denies the allegations" of the paragraphs in which Complainant asserts that the offers were made (id., para. 14-15). Respondent does not specifically address the Declaration of Complainant�s counsel regarding the offer for sale.
Respondent asserts that it was unaware of Benchmark Staffing when it began to use the BenchMark Jobs name for its business (id., para. 17).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that it has registered the service mark "BENCHMARK STAFFING SERVICES" at the USPTO and that it uses that mark in commerce. Complainant states that it has filed applications for registration for the service marks "BENCHMARK" and "BENCHMARK SPECIALIZED PRODUCTION STAFFING" at the USPTO and that it uses those marks in commerce. (See Factual Background supra). Complainant argues that "BENCHMARK" is the "dominant portion" of its "BENCHMARK STAFFING SERVICES" mark, as evidenced by the fact that it has disclaimed exclusive use of "STAFFING SERVICES" except in the mark as shown.
Complainant contends that the disputed domain name is confusingly similar to the service mark "BENCHMARK" in which it has rights, in particular because Complainant is in the business of providing employee staffing services and the disputed domain name is used in the same line of business.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent was aware of its mark when it registered the name, or should have been aware of the mark on the basis of its registration. Complainant states that Respondent�s use of the disputed domain name infringed its rights and therefore cannot establish rights or legitimate interests.
Complainant argues that Respondent registered and used the disputed domain name in bad faith as evidenced by (a) its use of the name to divert Internet users to a website competing with Complainant�s business, including following notice of infringement and (b) its offer to sell the name to Complainant for an amount in excess of its out of pocket expenses related to the name.
Complainant asks the Panel to order the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent contends that "BENCHMARK" is not the dominant portion of Complainant�s mark, and that "BenchMark Jobs" is not confusingly similar to Complainant�s mark.
Respondent argues that although it did take steps to alleviate confusion between its "BenchMark Jobs" business name and Complainant�s mark, that it did not relinquish its right to use that name. It states that Respondent continues to conduct an active business under the "BenchMark Jobs" name and that it has a legitimate business interest in retaining the name.
Respondent observes and provides printouts of web pages to evidence that a number of businesses outside the employee staffing sector use the term "benchmark" in their names. This is argued to support its assertion that Complainant does not have exclusive rights in the term "Benchmark" and that Respondent may continue to legitimately use the name "BenchMark Jobs".
Respondent denies that it registered and used the disputed domain name in bad faith. Respondent appears to deny the allegation that it offered to sell the disputed domain name by a general denial of allegation. While Respondent expressly denies three of the four bases for a finding of bad faith under paragraph 4(b) of the Policy, it does not expressly set forth such a denial in respect to the ground of offer to sell in paragraph 4(b)(i) of the Policy.
Respondent request that the Panel deny the findings and remedy requested by Complainant.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that it received notice and was afforded an adequate opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of a service mark registration for the term "BENCHMARK STAFFING SERVICES" in the United States and is using that mark in commerce in connection with providing employee staffing services (see Factual Background, supra). Complainant�s registration of the "BENCHMARK STAFFING SERVICES" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the service mark "BENCHMARK STAFFING SERVICES". Based on the April 22, 1997, date of registration of that mark submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the "BENCHMARK STAFFING SERVICES" mark arose prior to Respondent�s registration, on August 30, 2000, of the disputed domain name.
Complainant has applied to register the service marks "BENCHMARK" and "BENCHMARK SPECIALIZED PRODUCTION STAFFING" at the USPTO. Applications for registration do not establish rights in marks, or presumptions in favor of applicants. (Footnote 3) There is insufficient evidence on the record of this proceeding to establish that the term "BENCHMARK" standing alone is sufficiently distinctive or has established a sufficient secondary meaning to be associated exclusively with Complainant. The Panel will therefore confine its analysis of confusing similarity to Complainants registered "BENCHMARK STAFFING SERVICES" mark and the disputed domain name.
Respondent has registered the domain name . The use of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "BENCHMARK STAFFING SERVICES" since use of a gTLD is required of domain name registrants and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 4)
The principal issue in this administrative proceeding is whether, taken as a whole, the name "benchmark jobs" is confusingly similar to the mark "benchmark staffing services". The Panel notes that the U.S. Court of Appeals for the Federal Circuit has cautioned against a mechanistic application of a "dominant portion" test in determining likelihood of confusion, and has indicated that comparisons should be based on the entirety of a mark and allegedly infringing terms. (Footnote 5)
In terms of sound, appearance, connotation, and commercial impression, (Footnote 6) the Panel determines that the terms "benchmark jobs" and "benchmark staffing services" are confusingly similar. Both use the term "benchmark" that is at most suggestive of employee staffing services.(Footnote 7) Because the term "benchmark" is not commonly associated with employee staffing services, the relevant public familiar with that services sector would likely associate the term "benchmark" with the enterprise that is known under the "benchmark staffing services" mark. The terms "staffing services" and "jobs" are essentially synonymous when used in connection with businesses providing employee staffing services. "Jobs" is indicative of employment or offers of employment, as is "staffing".
Respondent has used the disputed domain name directly in the line of commerce served by Complainant. This magnifies the likelihood of confusion between a website identified by the disputed domain name and a website identified by Complainant�s mark (i.e., ).
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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." (Policy, paragraph 4(c))".
Respondent asserts legitimate rights or interests in the disputed domain name based on its claim to maintain rights to operate a business under the name "BenchMark Jobs". However, Respondent registered the disputed domain name at a time when Complainant already operated its commercial "Benchmark Staffing Services" website. An Internet search would have revealed the presence of a competitive business with a confusingly similar name. Respondent had some minimal obligation to avoid adopting Complainant�s mark in light of the directly competitive nature of its activities, whether or not the fact of Complainant�s service mark registration standing alone constituted constructive notice of its mark. Moreover, Respondent was notified of Complainant�s objection to use of its mark promptly upon commencement of Respondent�s use, and Respondent thereupon changed the name of its business. Although Respondent has stated that it is currently maintaining a business under the name "BenchMark Jobs", no evidence of such activity was presented to the Panel, and the website to which the disputed domain name is redirected uses the name "Interactive Staffing" with no reference to "BenchMark Jobs". If Respondent was in fact operating a business under the name "BenchMark Jobs" it should have furnished evidence of that to the Panel. Respondent has not established that it is using or that it prepared to use the disputed domain name in connection with a bona fide offering of services prior to notice of a dispute.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a respondent "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" (id., para. 4(b)(i)), and; (2) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
In the present proceeding, Respondent is using the disputed domain name that is confusingly similar to Complainant�s mark and website name to direct Internet users to a website offering competing services. There is no explanation or disclaimer on Respondent�s website home page that seeks to dispel the confusing use of Complainant�s mark. The Panel determines that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant�s mark as to sponsorship or affiliation with its website. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Having made this determination, the Panel need not consider the other grounds of bad faith asserted by Complainant.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain name to the Complainant.
7. Decision
Based on its finding that the Respondent, Benchmark Jobs, LLC , has engaged in abusive registration and use of the domain name within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name be transferred to the Complainant, Benchmark Staffing, Inc.
Frederick M. Abbott
Sole Panelist
Dated: July 13, 2001
Footnotes: The database printout (TESS) submitted as evidence of Complainant�s trademark registration shows the owner of the mark as "Benchmark Staffing Services, L.L.C. Limited Company Tennessee", at an address different than that provided by Complainant as its corporate address. Complainant has not provided an explanation for this discrepancy, although the TESS printout shows "ASSIGNMENT RECORDED". Respondent and its counsel have not challenged Complainant�s claim to ownership of the subject trademark. In the absence of a challenge and in the interests of expediency, the Panel will accept as true Complainant�s claim to current ownership of the subject trademark registration.(back to text) 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).(back to text) An application creates a presumption of use contingent on subsequent registration. 15 USCS � 1057(c).(back to text) See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). (back to text) In re Diamond Pacific Tool Corporation, 1997 U.S. App. LEXIS 10722 (CAFC 1997).(back to text) Id, at *6 - *7.(back to text) The term "benchmark" may refer to a standard of performance, and more particularly to a high standard of performance. While the term "benchmark" used in combination with the term staffing services or jobs may convey the meaning of a high level of employment services, in the Panel�s view this potential meaning is not so apparent as to be descriptive. On the other hand, the use of "benchmark" is not arbitrary. (back to text)
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