WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Korn/Ferry International Futurestep, Inc. v. Prashan Fernando
Case No. D2008-0631
1. The Parties
The Complainant is Korn/Ferry International Futurestep, Inc., Los Angeles, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
The Respondent is Prashan Fernando, Moratuwa, Sri Lanka;
2. The Domain Name and Registrar
The disputed domain name is registered with Schlund + Partner, AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 23, 2008, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the domain name at issue. On April 24, 2008, Schlund + Partner AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 4, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 27, 2008, the Respondent emailed the Center, stating that he operated a website under the disputed domain name for “working as a job bank”. He asked how to “overcome the problem”. The parties were advised by the Center on April 29, 2008 of the possibility of suspending proceedings in order to explore a settlement. There was no request for a suspension and no formal Response filed by the Respondent.
4. Factual Background
The Complainant was founded in 1998 under the name ‘Future Step’. It now trades under the name Korn/Ferry Futurestep in 17 countries and focuses on mid-level recruitment, process outsourcing, recruitment for projects and interim solutions.
The Complainant is the owner of numerous trademark registrations for FUTURESTEP, all of which precede the Respondent’s registration of the disputed domain name on November 9, 2007. The trademarks are held in a number of jurisdictions, including the European Union, the United States of America, Hong Kong SAR of China, Singapore and Australia. There is no trademark registration in Sri Lanka where the Respondent is domiciled.
The Complainant’s basic business is to connect middle managers with jobs. The Complainant operates many websites and articles which demonstrate its business.
The Complainant gave the Respondent no rights in respect of the disputed domain name. The Respondent is using the disputed domain name to redirect customers to its own job-bank site.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademark FUTURESTEP. The addition of the word “jobs” does not decrease the confusing similarity but enhances it because the business of the Complainant is to find jobs for people considering their future.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is he commonly known by the disputed domain name, nor is he making a legitimate non-commercial or fair use of the disputed domain name. The website accessed by the disputed domain name directs Internet users to the Respondent’s own job-bank.
The Complainant submits that confusion is created by the Respondent’s use of the disputed domain name with the Complainant’s trademarks. The Respondent is benefiting from the fame of the Complainant’s marks. His activity cannot constitute a bona fide offering of goods and services.
The disputed domain name was registered and has been used in bad faith. Registration of a domain name incorporating another party’s arbitrary trademark which does not have a common meaning supports the inference of bad faith (see Laboratoire Nutergia v. Jeongyong Cho,WIPO Case No. D2007-1582). In that case, it was noted that the word ‘Nutergia’ was an arbitrary term created by the complainant. The respondent’s registration of supported an inference that the respondent had no legitimate purpose for registration and did so in bad faith. The word “futurestep” likewise has no common meaning and is an arbitrary term created by the Complainant to represent its services. The expression is recognised worldwide as the symbol of the Complainant’s activities.
The Respondent’s use of the Complainant’s trademark on his website to advertise services identical to services offered by the Complainant, offers further evidence that the Respondent was aware of the Complainant’s rights to the trademark at the date of registration of the disputed domain name. The Respondent registered the disputed domain name in bad faith in an attempt to capitalize on the recognizable nature of and goodwill in the Complainant’s FUTURESTEP mark.
Similarity of services makes the likelihood of confusion high and constitutes evidence of bad faith (see Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768). That case held that the content of an offending website was relevant. Likelihood of confusion can provide evidence of bad faith registration and use.
B. Respondent
The Respondent did not file any formal Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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.”
The burden of the Complainant, under paragraph 4(a) of the Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s registered trademark FUTURESTEP. The addition of the word “jobs” to “futurestep” does not decrease the confusing similarity but rather enhances it. The business marketed under the trademark FUTURESTEP is that of finding jobs.
Accordingly, the Complainant succeeds under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights. That fact is determinative unless the Respondent can demonstrate that he comes within one or other of the clauses of Paragraph 4(c) of the Policy. The onus was on him to do so but he has elected not to file a response.
Accordingly, the Complainant has proved the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s trademark has not been registered in Sri Lanka where the Respondent lives. In some situations, that fact would have been inimical to a complainant endeavouring to prove registration in bad faith. However, the Panel in the present case is able to infer registration in bad faith as well as use in bad faith because of the following circumstances.
(a) The Respondent’s website provides a link to a competing service for job-finding. It seems to the Panel to be no coincidence that use was made by the Respondent of a well-known name in the recruitment industry. Besides, the fact that the Respondent has used an expression “futurestep”, an arbitrary term, as distinct from a well-understood word, points to his knowledge of the Complainant.
(b) The inference that the Respondent must have known of the Complainant’s fame; and registered the disputed domain name nevertheless in order to publicize his own recruitment business.
(c) The Respondent by his use of the disputed domain name, prevents the Complainant as owner of the trademark from reflecting the mark in a corresponding domain name. He is using the disputed domain name for commercial gain to direct internet users to his website. By so doing, he creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.
Accordingly, the Complainant has proved Paragraph 4(a)(iii) of the Policy and must succeed overall.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Sir Ian Barker
Sole Panelist
Dated: June 18, 2008
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