The Complainant is Zespri Group Limited of Mount Maunganui South, New Zealand, represented by James & Wells, New Zealand.
The Respondent is Jobfill Limited of Wellington, New Zealand. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to R a request for registrar verification in connection with the Disputed Domain Name. On the same day, R 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” or “UDRP”), 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent submitted to the Center a Response on January 25, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on February 2, 2011. 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. 4. Factual Background
The Complainant and its associated companies have sold New Zealand kiwifruit worldwide under the trade mark ZESPRI since 1997 and now supply 60 countries with sales exceeding NZD 1.5 billion. The Complainant owns trade mark registrations for ZESPRI GOLD, ZESPRI GREEN AND ZESPRI RED and markets its kiwifruit under these brands. In particular, the Complainant owns Australian trade mark registration 1061446 for the word mark ZESPRI RED dating from June 2005 quite apart from corresponding registrations in numerous other jurisdictions. It also owns various domain name registrations incorporating the ZESPRI or ZESPRI RED mark, notably including which was transferred to it by the Respondent following demand by the Complainant and one day after the Respondent registered the Disputed Domain Name.
The Respondent is also based in New Zealand and operates an on-line employment agency service through its website at “”. The Disputed Domain Name was registered on July 23, 2010. And the domain names and , which were also registered by the Respondent on July 24, 2010, are now owned by the Complainant 5. Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is identical to its ZESPRI RED trade mark registrations for the purposes of the Policy.
It submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name and in short that it has not consented to the Respondent’s use or licensed such use, the Respondent has not been commonly known by a corresponding name, has made no bona fide offering of goods or services under the name or mark and its use does not constitute a legitimate noncommercial or fair use. The Complainant says that the Respondent offers goods or services in relation to a completely unrelated field of activity and has registered the Disputed Domain Name not in connection with a bona fide offering of goods or services but rather to intentionally and covertly direct Internet users to its own website and as such is deliberately taking advantage of the goodwill and reputation in the ZESPRI RED mark. This is not fair use according to the Complainant because it diverts all Internet users seeking information about the Complainant and its products and not just those seeking employment.
As far as bad faith is concerned the Complainant says that it registered its ZESPRI RED trade marks in 2005 and some 5 years before the Respondent registered the Disputed Domain Name. It prevents the Complainant from registering the Disputed Domain Name. It also submits that the Respondent has embarked on a pattern of conduct by on its own admission registering the names of large companies as domain names as part of its search optimization strategy by establishing “301” redirections from these domain names to the Respondent’s own landing pages. The domain names and that were registered by the Respondent only a day after the Disputed Domain Name and which were subsequently transferred to the Complainant excluding the Disputed Domain Name are a case in point. Lastly the Complainant says that the Respondent’s activity squarely falls within paragraph 4(b)(iv) of the Policy in that by using the Disputed Domain Name it is intentionally attracting Internet users to its own website by creating a likelihood of confusion with the ZESPRI RED mark as to the affiliation, sponsorship or endorsement of its website or services. The Complainant notes that it operates a “Careers at ZESPRI” page and the Respondent has developed its own page under this title which Internet users are diverted to after typing in the Disputed Domain Name. The Complainant says that in addition to diverting potential employees away from it this conduct prevents Internet users from visiting the Complainant’s website and from being able to find out more about it and its brands. B. Respondent
The Respondent does not dispute that the Disputed Domain Name is identical to the Complainant’s trade mark. In essence the Respondent submits that it uses the Disputed Domain Name as part of the search engine optimization strategy for its website which it uses in order to increase the visibility of its website pages. It submits that this is a bona fide strategy which operates on the basis that most Internet users looking for employment in a particular company would enter the company’s name in a search engine and that the results brought up would firstly indicate the Complainant’s websites and afterwards the Respondent’s relevant web page as a result of the 301 direction arrangement. As a consequence the Respondent says that there can be no confusion or false affiliation as the user will know as soon as they land on the Respondent’s page that it is a “Jobfill” page operated by the Respondent. Further, the Respondent says that even if an Internet user types “” directly into an Internet browser it will automatically divert to the Respondent’s “Jobfill” web page and a similar result will occur if the Disputed Domain Name was typed into a search engine. The Respondent says that in both cases the user will be in no doubt as to what page they are on as it will be clearly identifiable as a “Jobfill” page.
Overall the Respondent asserts that it is entitled to use the Disputed Domain Name in this manner and that this case can be distinguished from previous cases in that the Complainant’s trade marks do not appear anywhere on the Respondent’s website and does not involve the Complainant’s trade marks being displayed to Internet users as a result of the Respondent’s actions and as a consequence there is no passing off and this conduct does not constitute the taking of unfair advantage of the Complainant’s marks or misleading Internet users in any way. Further the Respondent notes that the Complainant had 5 years in which it could have registered the Disputed Domain Name but apparently chose not to do so and also notes that the Complainant has not yet registered other domain names reflecting its brands, for example or . It says that its good faith gesture in transferring the domain names and to the Complainant should not be taken as an admission of any kind and it maintains that the registrations of these domain names and of the Disputed Domain Name for the purposes of its optimization strategy were entirely legitimate and not in bad faith. 6. Findings and Discussion A. Identical or Confusingly Similar
The Panel finds that the key element of the Disputed Domain Name is identical to the Complainant’s very distinctive ZESPRI RED registered trade mark as noted above. Accordingly, the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has confirmed that it has never permitted, sponsored or acquiesced in the Respondent’s use of its trade mark in the Disputed Domain Name. The Respondent has on its part confirmed that it is not a competitor of the Complainant and does not use the Disputed Domain Name in relation to goods or services per se, but rather uses it in order to enhance its search optimization strategy. The essence of this case is a consideration of whether a party who has no other right or legitimate interest in a domain name which is identical to another party’s trade mark has a legitimate interest in registering and using that domain name for the purpose of optimizing its Internet search strategy.
Even though the Respondent asserts that as a consequence of use in this manner the Complainant’s trade mark is not displayed to Internet users, that Internet users arriving at the Respondent’s web page can be under no illusion that it is the Complainant’s web page, that the Respondent is not in competition with the Complainant, and that even in optimized search results, references to the Complainant’s own websites come up first, the Panel is not persuaded that this renders the Respondent’s interest as legitimate.
Internet users who type the highly distinctive Disputed Domain Name into a web browser could reasonably expect that they would arrive at a website concerning the Complainant, or the Complainant’s products. Alternatively they might not be surprised to arrive at a website authorised by the Complainant, for example, operated by the Complainant’s distributors. However the Panel does not accept that Internet users would expect to be automatically diverted to a webpage operated by an entirely unrelated and unauthorized third party employment agent which concerns employment opportunities at the Complainant. There is no doubt that these Internet users would be confused even if only initially and briefly by being misleadingly diverted to the Respondent’s web page.
The second element of the Policy anticipates that in certain circumstances a respondent who uses a complainant’s trade mark in a domain name may still have a right or legitimate interest in its domain name for the purposes of the Policy. However those circumstances are necessarily predicated on the basis that there is no element of deception involved and that in using the domain name the respondent is not attempting to misleadingly divert Internet users in any way. In this case, even though the Respondent asserts that its use of the Disputed Domain Name in order to optimize its search strategy does not adversely affect Internet users, such use does in the Panel’s view potentially confuse Internet users. This is so even if the confusion is transitory by misleadingly affording them the expectation that the Disputed Domain Name will resolve to a site concerning the Complainant’s products when it actually diverts them to the Respondent’s employment agency’s website and it is apparent that this is so once they arrive at that site. This kind of initial interest confusion has been recognized by numerous prior panels in cases such as Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
Although the Respondent attempts to argue that use of a domain name for the purposes of a search optimization strategy alone does not in and of itself mislead Internet users, such use does in this case have the real potential to confuse and mislead Internet users who type the domain name directly into a web browser in the manner described above. For this reason the Panel cannot condone the Respondent’s use of the Disputed Domain Name as part of its search optimization strategy under the second, or as noted below, the third element of the Policy. The Panel notes that there is an alternative available to the Respondent in order to optimize its search results, namely to pay a search engine for this facility.
The Respondent cannot expect that it should be able to justifiably register and use domain names which are identical to highly distinctive trade marks such as the Complainant’s ZESPRI RED mark for no other reason than to optimize its search results strategy and in circumstances where Internet users entering the domain name into a web browser would be confused and misleadingly diverted to the Complainant’s website. As a result the Panel considers that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Disputed Domain Name was registered long after the Complainant first used and subsequently registered its ZESPRI RED trade mark and as noted above was registered purposefully by the Respondent for the purpose of optimizing its search strategy but clearly with the effect of also diverting Internet users seeking the Complainant’s website to the Respondent’s website. As discussed under the second element above, the effect of the Respondent’s registration of the Disputed Domain Name is at least initially to confuse Internet users who seek the Complainant’s website and to misleadingly divert them to the Respondent’s website page advertising jobs with the Complainant, but without the Complainant’s permission or imprimatur. This conduct amounts to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
As a consequence the Panel finds that the Disputed Domain Name was registered and used in bad faith and the Complaint succeeds under the third element of the Policy. 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.
Alistair Payne
Sole Panelist
Dated: February 12, 2011
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