The Complainant is Career Group, Inc. of Los Angeles, California, United States of America (“US”), represented by Hill, Farrer & Burrill LLP, US.
The Respondent named in the Complaint and Response is The Career Group Ltd of Newton, Massachusetts, US, represented by Sunstein Kann Murphy & Timbers LLP, US. For reasons described below, Deborah Simonds will also be considered a Respondent, associated with the same Response filed by Sunstein Kann Murphy & Timbers LLP. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2014. On July 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2014 the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on July 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2014. The Response was filed with the Center on August 20, 2014. The Complainant filed a Supplemental Filing dated August 25, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 1, 2014. 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 is a California corporation that provides staffing services for temporary and permanent employment positions. The Complainant has been in business since 1981 and has offices in several US cities. The Complainant operates a website at “”.
In 1992, the Complainant obtained a US trademark registration for a mark composed of CAREER GROUP INC. and a design consisting of the stylized letters “c” and “g” (US Trademark Registration No. 1718611, registered September 22, 1992). The registration disclaimed exclusive rights to the word “career”. However, that mark was cancelled on June 28, 2003. An apparently identical design mark, featuring CAREER GROUP INC. and the stylized letters “c” and “g”, was registered on December 13, 2005 (US Trademark Registration No. 3027547), disclaiming exclusive rights to the words “group, inc.”. The Complainant subsequently obtained registration for another, similar logo, with additional design elements and a different typeface (US Trademark Registration No. 4108309, registered on March 6, 2012), again disclaiming exclusive rights to “group inc.” and naming the 2005 registration as a “prior registration”. In this Decision, the three marks are referred to, respectively, as the 1992, 2005, and 2012 registered trademarks.
The Domain Name was first registered in April 1995 in the name of the Respondent The Career Group Ltd (“CG Ltd”). CG Ltd was a Massachusetts corporation that provided high technology recruiting services starting in 1986, chiefly placing software engineers with companies in the New England region. CG Ltd used the Domain Name for its website and email accounts.
In 1999, the Complainant and CG Ltd were involved in a dispute over CG Ltd’s use of CAREER GROUP as an unregistered service mark. The Complainant sent CG Ltd a cease-and-desist letter, and CG Ltd brought a declaratory judgment action in US Federal District Court, asserting common law trademark rights for use in New England predating the Complainant’s 1992 registered design mark. The dispute included CG Ltd’s use of the Domain Name. The litigation was ended by a confidential settlement agreement, attached to the Response, which allowed CG Ltd and its “successors” to use CAREER GROUP as a trademark and to use the Domain Name under certain conditions, including a disclaimer of affiliation with the Complainant on the home page of any website associated with the Domain Name.
CG Ltd later filed Articles of Voluntary Dissolution, which were recorded by the Massachusetts Corporations Division on September 11, 2008. The Internet Archive’s Wayback Machine stored screenshots of the landing page subsequently associated with the Domain Name at least until June 2009, which displayed this notice:
“After 21 years of serving the software and computer community, The Career Group, Ltd has closed. […] Walsh has retired. […] Katz and Deborah Simonds have gone on to other careers. We thank you for your business.”
The landing page also included the disclaimer that had appeared on the home page of the CG Ltd website since the 1999 trademark settlement agreement:
“This is not the web-site of Career Group Inc., with offices in Los Angeles, San Francisco, San Jose, Redwood Shores and New York. Career Group Inc.’s URL is: .”
Although there was no longer a website associated with the Domain Name after 2009, it is undisputed that the Domain Name continued to be used for email accounts by Ms. Simonds, Ms. Walsh, and Mr. Katz. Ms. Walsh’s email address continued to be listed as the contact address for the registrant in the Registrar’s WhoIs directory. According to the Declaration of Ms. Simonds, Ms. Simonds had not been fully engaged in the business of CG Ltd since 2001, “taking a break to raise my children”, but she continued to use her CG Ltd email account to refer job candidates to Mr. Katz and Ms. Walsh and to “stay in touch” with business contacts. Ms. Simonds’ LinkedIn page says that she was a co-founder and recruiting partner at CG Ltd from 1986-2007. “Easing back into recruiting”, according to her Declaration, Ms. Simonds took work as an independent contractor for unrelated recruiting firms, most recently a company called Attivio.
When the Domain Name registration was about to expire in 2013, Ms. Simonds asked her husband to renew the registration. The registration continued to show Ms. Walsh’s email address as the “Registrant Email”, while Ms. Simonds’ email address was given as the “Admin Email”. Ms. Simonds and Mr. Katz, in their respective Declarations, indicate that Ms. Simonds contacted Mr. Katz in advance and that Mr. Katz assented to Ms. Simonds’ renewal of the registration, in anticipation of Ms. Simonds “reestablishing” or “resurrecting” CG Ltd.
In June 2013, counsel for the Complainant sent an email to the contact address given in the Domain Name registration and received this “out of office” response from Ms. Walsh’s email account:
“Dear Friends and Clients,
After more than 27 years of helping engineers find the right positions and helping companies find the right employees, I have retired. The Career Group, Ltd is closed and [Katz and Simonds] have gone on to other things. We wish you all good fortune with your endeavors.
Regards,
[Walsh]
--
[…] Walsh
The Career Group, Ltd.”
The Complainant communicated with Ms. Simonds on several occasions about transferring the Domain Name, but she did not agree to transfer or sell it to the Complainant. This proceeding followed. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its registered trademark. The Complainant argues that the Respondent no longer exists as a legal entity and has no standing to assert an interest in the Domain Name, invoke the terms of the 1999 confidential settlement agreement, or submit a Response in this proceeding.
The Complainant concludes that Ms. Simonds, who continues to compete professionally with the Complainant’s staffing business, renewed the Domain Name registration in 2013 in bad faith, with actual and constructive knowledge of the Complainant’s trademark. B. Respondent
The Response was submitted by counsel in the name of the defunct Domain Name registrant, CG Ltd, but argues that rights to the Domain Name and the corresponding common law service mark CAREER GROUP, as well as rights under the 1999 settlement agreement with the Complainant, devolved to three of the founders of CG Ltd, Mr. Katz, Ms. Walsh, and Ms. Simonds, when the company was dissolved. The Response states further that Ms. Simonds renewed the Domain Name registration and continued to use the CAREER GROUP mark and an email account under the Domain Name, with the assent of Mr. Katz and Ms. Walsh.
The Response challenges the Complainant’s trademark rights and suggests that its 2012 trademark registration was obtained fraudulently. The Response claims rights or legitimate interests in the Domain Name and denies bad faith in the original registration, renewal, or use of the Domain Name.
The Respondent asks the Panel to make a finding that the Complaint represents an attempt at Reverse Domain Name Hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Supplemental Filing
The Complainant submitted a Supplemental Filing dated August 25, 2014. In this submission, the Complainant argues that the Response concedes that the named Respondent, CG Ltd, no longer exists as a legal entity or has an interest in the Domain Name. The Complainant argues further that Ms. Simonds cannot rely on the 1999 trademark settlement agreement cited in the Response.
The Rules and Supplemental Rules provide only for a complaint and a response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel itself (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Panels are consequently reluctant to countenance delay through additional rounds of pleading and require some showing of “exceptional circumstances” to accept supplemental filings as part of the record in a UDRP proceeding. Panels typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, and cases cited therein. “Exceptional circumstances” involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL,WIPO Case No. D2012-1198; Mani Brothers, LLC v. Lincoln Gasking,WIPO Case No. D2008-0097.
Applying these standards, the Panel accepts the Complainant’s supplemental filing as a reply to the evidence included in the Response concerning the legal status of CG Ltd and Ms. Simonds’ interests in the Domain Name, as well as to issues concerning the 1999 settlement agreement that was submitted with the Response. B. Respondent Party and Standing
The Complainant, both in the Complaint and in the Supplemental Filing, challenges the standing of either CG Ltd or Ms. Simonds to submit a Response in this proceeding.
It is undisputed that CG Ltd was dissolved in 2008, and the Response does not claim that there is currently a legal entity by the name of Career Group Ltd. Instead, the Response argues that “rights to the trademark CAREER GROUP and to the domain name reverted to the original partners” when CG Ltd was dissolved, citing a statement to that effect in the Declaration of Mr. Katz. Mr. Katz’ assertion is not supported by any document showing that the company assigned intellectual property rights or rights in the Domain Name to Mr. Katz, Ms. Walsh, and Ms. Simonds. The Response also does not attempt to demonstrate that under Massachusetts law these three individuals became successors in interest, by operation of law, to the assets of CG Ltd upon its dissolution, or to the rights and obligations of CG Ltd under the 1999 trademark settlement agreement with the Complainant.
However, Ms. Simonds has continued to exercise control over the Domain Name, with the assent of Mr. Katz and Ms. Wash, and to use it professionally for an email account. Her Declaration states that, at the time she had the Domain Name registration renewed in March 2013, she was “continuing to use as my primary email address and it was a natural progression towards reestablishing the company at a later date.” The Declarations of Mr. Katz and Ms. Walsh do not express an interest in joining the Response or controlling the Domain Name, and they do not explicitly state that they intend to associate with Ms. Simonds in reestablishing CG Ltd as a company.
The Panel finds, therefore, that Ms. Simonds is the real party in interest with regard to the renewed Domain Name registration and that the listed registrant, Career Group Ltd, is at this point no more than an alter ego for Ms. Simonds. Accordingly, Ms. Simonds will be named as a Respondent in this proceeding and the term “Respondent” in this Decision will hereafter refer to Ms. Simonds.
The Panel notes that, under the Policy, the Complainant would be obliged to establish the elements of the Complaint even if no Response were filed or accepted. The Response submitted to the Center in this proceeding includes relevant evidence and arguments concerning the elements of the Complaint and Ms. Simonds’ interest in the Domain Name. The Response was submitted by legal counsel with the required signed Certification of accuracy and completeness (see Rules, paragraph 5(b)(viii), Supplemental Rules, paragraph 14). The Panel therefore accepts the Response for consideration in this proceeding. The Complainant’s evidence and arguments concerning the Respondent’s rights and interests in the Domain Name will be taken into account as they bear on the issues, particularly the second and third elements of the Complaint. C. Identical or Confusingly Similar
The Complaint refers to “a federal trademark” and attaches registration information for its 1992 and 2012 US trademark registrations. The Complaint itself does not mention that the 1992 registration was cancelled and therefore cannot serve as a basis for this UDRP Complaint, although this fact is disclosed in a Declaration attached to the Complaint. The Complaint also does not attach the 2005 trademark registration, which is still listed as “live” in the trademark database operated by the US Patent and Trademark Office (“USPTO”).
The Panel notes that the Complainant does not have “Career Group” or the company name, “Career Group, Inc.”, registered as a standard-character mark, and the Complaint does not claim or establish that this name, which appears to be descriptive, is protected under common law. The Complainant’s 2012 trademark registration is for a somewhat different design mark than the one registered in 1992 and 2005, featuring the company name in different typefaces, with different additional design elements. The Panel notes that the logo currently displayed on the Complainant’s website is not identical to any of the Complainant’s currently or formerly registered marks but similarly displays the words “Career Group” (without “Inc.”) and the stylized letters “c” and “g”, with no accompanying symbols or text asserting trademark rights.
Nevertheless, the Complainant does hold current registrations for two design marks that prominently feature CAREER GROUP INC. The Response ignores the 2005 trademark registration (which the Complainant also does not cite) and argues that the 2012 registration was obtained fraudulently because the Complainant’s application, which was filed on June 30, 2011, stated that the mark had been in continuous and “substantially exclusive” use for at least five years. The Response contends that the statement about exclusivity was false, as the Complainant was aware of the Respondent’s use of an asserted common law CAREER GROUP mark that was the subject of the Parties’ 1999 settlement agreement. The Panel notes that the Complainant’s statement to USPTO was made in an application for a distinctive design mark, not for the words “Career Group” or “Career Group Inc.” As suggested by a review of the decisions included in the Index of WIPO UDRP Panel Decisions, Section II.A.1.d (“Mark validity in question”), UDRP panels do not lightly disregard trademark registrations that have issued following examination by a national trademark authority. The Panel does not consider it appropriate to do so without clear and convincing evidence of fraud or other grounds for invalidity under relevant national law, which generally should be established before a court or trademark authority rather than in a limited, UDRP proceeding. In any event, the Panel does not find such compelling evidence in this record to support a conclusion that the Complainant’s 2005 and 2012 US trademark registrations should be disregarded for Policy purposes.
The distinctive portion of the Domain Name consists of the words “career group”, which are also prominent in the Complainant’s 2005 and 2012 registered design marks. UDRP panels customarily treat the first element of the Policy as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 2.0, paragraph 1.2. A “figurative” or “design” mark generally cannot be identical to a Domain Name System (DNS) domain name, which cannot include stylized alphanumeric characters or other design elements. However, a domain name may be confusingly similar to the words or other characters that are dominant elements of a trademark, as is the case here. The Panel finds in these circumstances that the Domain Name is confusingly similar to the Complainant’s registered marks for purposes of the first element of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Because the respondent in a UDRP proceeding is in the best position to assert its rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. The Complainant in this proceeding has made a prima facie case, demonstrating that the Domain Name is confusingly similar to a dominant element of its registered design marks and that the Respondent had actual knowledge of the Complainant and of the Complainant’s similar design mark that was a factor in the Parties’ 1999 trademark and domain name settlement agreement.
The Response demonstrates that CG Ltd (a) was known by a name corresponding to the Domain Name, (b) engaged in a bona fide offering of services for more than two decades, and (c) used the Domain Name for years in connection with that business. CG Ltd also asserted common law protection for a corresponding CAREER GROUP mark, which the Complainant agreed not to challenge as part of its 1999 settlement agreement with CG Ltd, subject to an appropriate website disclaimer of affiliation with the Complainant.
But CG Ltd was dissolved six years ago. The message subsequently displayed on the website associated with the Domain Name and in response to emails directed to the contact address for the Domain Name made it clear that the company was no longer in business, that Ms. Walsh had retired, and that Mr. Katz and Ms. Simonds had gone on to “other careers”. Ms. Simonds continued to use the Domain Name for her principal email address, but the record does not demonstrate that in any other respect her professional endeavors were linked to a business known as “Career Group”. In fact, she only recently terminated her work as a recruiter with an unrelated firm, Attivio, after working for other recruiting firms in the years after CG Ltd closed its business in 2008. There is no evidence in the record of Ms. Simonds using a website, advertising, marketing, contracts, or invoices with the name “Career Group” since CG Ltd was dissolved. The Panel concludes that Ms. Simonds has not demonstrated that she or her business have been “commonly known” by a name corresponding to the Domain Name, within the meaning of the Policy, paragraph 4(c)(ii), since CG Ltd was dissolved.
Six years after the dissolution of CG Ltd, Ms. Simonds says she now intends to “reestablish” Career Group, after renewing the Domain Name registration in 2013. Without discrediting that intent, the Panel concludes that the record simply does not include evidence of “demonstrable preparations”, within the meaning of the Policy, paragraph 4(c)(i), to conduct business under that name, or even to operate a commercial website using the Domain Name.
Accordingly, the Panel concludes that the second element of the Complaint has been established. E. Registered and Used in Bad Faith
The Respondent’s inability to establish rights or legitimate interests in the Domain Name for purposes of the second element of the Complaint does not foreclose discussion of the third element, bad faith in the registration and use of the Domain Name. A registrant without rights or interests in a domain name within the meaning of the Policy, paragraph 4(c), must still be shown to have acted in bad faith within the meaning of the Policy, paragraph 4(b), to warrant the transfer or cancellation of the domain name.
The Complaint makes several arguments in the alternative for a conclusion of bad faith.
The Complainant contends first that CG Ltd acted in bad faith in registering the Domain Name in 1995 and then using it for a recruiting website, as CG Ltd was a competitor with “actual or constructive knowledge” of the Complainant’s 1992 design mark registration. This argument is undercut by the fact that the Complainant entered into a settlement agreement with CG Ltd in 1999 recognizing the latter’s right to continue to use its asserted, preexisting, common law mark CAREER GROUP, including its use in the Domain Name. Moreover, as “Career Group Ltd” was also the name under which CG Ltd was incorporated and under which it had conducted business since 1986, the Panel is not persuaded that CG Ltd chose a corresponding Domain Name in 1995 in an effort to exploit the Complainant’s design mark.
The Complaint goes on to suggest that it was bad faith to renew the Domain Name registration in 2013 in the name of a legal entity that was dissolved and had no power to enter into contracts. It is not uncommon, however, for domain names to be registered using a trade name or alter ego rather than in the name of an individual or incorporated entity. The registrant name might be deemed deliberately misleading if had been used to avoid responsibility for the Domain Name, accompanied by fictitious contact information, for example. But the evidence here does not suggest an attempt to hide those responsible for the use of the Domain Name. The email addresses and postal address given in the registration were valid. The Complainant argues that the presumably automatic “out of office” reply to its email directed to Ms. Walsh demonstrates bad faith, but the Panel notes that the Complainant had no difficulty reaching Ms. Simonds through both the postal address and Admin Email address shown in the Registrar’s WhoIs database.
It is, however, appropriate in these particular circumstances to consider whether there was bad faith in the March 2013 renewal of the Domain Name registration, even though renewal is not normally the relevant time to assess bad faith. According to the plain terms of the Policy, paragraph 4(a)(iii), bad faith must be demonstrated in both the registration and the use of the Domain Name, so it is necessary to determine when “registration” occurred for purposes of this element of the Complaint. The consensus of WIPO UDRP panels is that the relevant event is the respondent’s first registration or acquisition of the domain name, not the respondent’s most recent renewal of registration:
“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name… Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name” (WIPO Overview 2.0, paragraph 3.7).
The Complainant argues that “it is fair to assume the domain was transferred” to Ms. Simonds “as part of Respondent’s liquidation process.” As discussed above in connection with the second element of the Complaint, the Panel finds insufficient evidence in the record to establish that CG Ltd actually transferred the Domain Name to Ms. Simonds or that she succeeded to ownership of that asset by operation of law. Mr. Katz, Ms. Walsh, and Ms. Simonds continued to use the Domain Name for email accounts, but nothing in the record shows that they took steps to formalize a disposition of the Domain Name when they were closing the business of CG Ltd.
However, the Panel concludes that March 31, 2013 is indeed the relevant “registration” date for purposes of the third element of the Complaint. At that time, Ms. Simonds simply left the name of the registrant unchanged and used the Registrar’s renewal procedure rather than recording a change of ownership, despite the fact that CG Ltd had been dissolved five years earlier and communicated to its clients and the public that it had “closed”. Mr. Katz agreed to let Ms. Simonds renew the Domain Name registration (presumably at her expense), but the record does not establish that Ms. Simonds, Mr. Katz, or Ms. Walsh had continuously conducted business using the “Career Group” name under a different form of ownership. Thus, this is not a case where “evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate” (WIPO Overview 2.0, paragraph 3.7). The Panel concludes on this record that Ms. Simonds may be treated as a new owner of the Domain Name, which she obtained when she had her husband renew the registration online on March 31, 2013.
The Complainant contends that Ms. Simonds did so in bad faith, with actual or constructive notice of the Complainant’s mark and an intention to mislead Internet users for commercial gain, consistent with one of the nonexclusive examples of bad faith mentioned in the Policy, paragraph 4(b):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
It is undisputed that Ms. Simonds was aware of the Complainant and potentially competed with the Complainant in the business of recruiting employees for technology positions, both while working with CG Ltd and since. The question is whether an intention to mislead Internet users as to source or affiliation was a material factor in her decision to renew the registration of the Domain Name.
On the available record, the Panel concludes that the Complainant has not established the probability of such a bad faith motivation. The Complainant’s various, registered design marks (and its current, unregistered logo) all include the words “Career Group”, but those words are descriptive and potentially relevant to the recruiting businesses of both Ms. Simonds and the Complainant. It is not clear that the Complainant could obtain registration of these words as a standard-character mark; in fact, it has been obliged to disclaim exclusive rights to “career” or “group” in its succession of design mark registrations. The Complainant has not demonstrated the fame of its marks or established the likelihood that job candidates or employers would be confused by the use of those words separate from any of the various “CG” design logos. The Panel notes that an Internet search engine query shows that other organizations use those words in connection with their employment or recruiting services, including Career Group Staffing, The Franklin Career Group, Diversity Career Group, and Catalyst Career Group. Thus, it is not self-evident that the Domain Name, without more, would create a likelihood of confusion with the Complainant, or that the Domain Name would, more likely than not, be registered for its value in targeting the Complainant’s trademark, rather than for its descriptive value.
Ms. Simonds, of course, was aware of the 1999 trademark settlement between the Complainant and CG Ltd. She knew that the Complainant had registered an earlier design mark featuring the words “Career Group”. She also believed, according to her Declaration, that she had succeeded to the rights to use the Domain Name and the common law mark CAREER GROUP, following the dissolution of CG Ltd. That belief may not be well founded. The Panel did not find sufficient evidence in the record of this proceeding to concur, but it is a theory that could be further tested, if necessary, in litigation. The point is that Ms. Simonds plausibly considered that the Domain Name would continue to be non-infringing. Moreover, she had good reasons to seek to retain the Domain Name. She had used a corresponding name in business for many years, she continued to use the Domain Name for her email account, and she contemplated reestablishing an independent recruiting business using the “Career Group” name, mark, and Domain Name. On balance, given Ms. Simonds’ long-standing use of the Domain Name, the descriptive nature of the Domain Name, and Ms. Simonds’ statements in her Declaration concerning her reasons for renewing the Domain Name registration, the Panel concludes that the Complainant has not met its burden of persuasion to establish that the Domain Name was registered in bad faith.
The Complainant also cites the “passive holding” doctrine articulated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, arguing that there is bad faith “use” as well as bad faith registration of the Domain Name, despite the absence of an associated website. As explained in WIPO Overview 2.0, paragraph 3.2, the relevant decisions typically hold that the panel “must examine all the circumstances”. Examples of cumulative circumstances indicative of bad faith include “the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.” These circumstances do not seem to apply in the current proceeding. The Panel notes that Telstra and similar decisions concerned very well-known and distinctive marks, such that “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name” (Telstra). That is not true of the Complainant’s design mark here. In any event, Ms. Simonds continues to “use” the Domain Name for an email account, listing that email address on her LinkedIn page and elsewhere. The Panel does not find this use to be in bad faith, based on the facts and inferences outlined in the preceding paragraph.
The Panel concludes that the third element of the Complaint has not been established. The Complaint, therefore, fails.
This decision, of course, is without prejudice to any judicial determination concerning Ms. Simonds’ rights to the Domain Name, the asserted common law CAREER GROUP mark, or the benefits of the 1999 settlement agreement. These issues, as well as an assessment of the credibility of witnesses and the facts surrounding the dissolution of CG Ltd, are beyond the jurisdictional and practical scope of a narrowly focused, expeditious UDRP dispute resolution proceeding. F. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The WIPO Overview 2.0, paragraph 4.17, explains the consensus approach to Reverse Domain Name Hijacking claims as follows:
“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.”
The Complainant in this proceeding prevailed on two of the three elements of the Complaint and had colorable, even if ultimately unsuccessful, arguments on the third. The Panel does not find evidence of bad faith or abuse of process, nor does there appear to be a pattern of harassment. Consequently, the Panel declines to enter a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: September 18, 2014
Full & Egal Universal Law Academy