The Complainant is Toolbox for HR Spółka Z Ograniczoną Odpowiedzialnością Spółka Komandytowa, Poland, represented by Snażyk Korol Mordaka sp.k., Poland.
The Respondent is Domains By Proxy, LLC, United States of America / Marco Yammine, Poland, represented by Lawmore, Poland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. On October 20, 2020, the Respondent requested for an extension of time to submit a response. On October 21, 2020, the Center granted the Respondent an automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was submitted on October 30, 2020. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 5, 2020. 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 November 9, 2020, the Complainant filed an additional submission. The Respondent replied on November 16, 2020, stating that he did not have sufficient time to reply to the Complainant’s additional assertions on the merits. Therefore, the Panel invited the Respondent to submit a reply on the merits within a seven-day deadline. On November 27, 2020, the Respondent filed an additional submission replying to the Complainant’s submission of November 9, 2020. 4. Factual Background The Complainant is a tech recruitment company based in Warsaw, providing other companies with services in the following fields: recruitment process outsourcing, talent souring, candidate travel management, recruitment consultancy and data research. The Respondent cooperated with the Complainant on a B2B basis (from an unspecified time in 2018). Under the contract the Complainant was obliged to provide services such as “development of the products in line with the TB4HR organizational strategy” and “maintenance and support of the products”. The contract also stipulated an assignment of all rights being a result of the Respondent’s services. Then the Respondent was employed by the Complainant (from December 3, 2018 until June 5, 2020). The Respondent worked i.a.,as R&D manager for the project “Development of an innovative system automating early recruitment processes based on an innovative system auditing early recruitment processes based on self-learning algorithms and Big data” for which the Complainant received public funds. On March 12, 2020, the Respondent together with other employees of the Complainant established a new company, CVT sp. z o.o. The disputed domain name was indicated as an official domain name of CVT Sp. z o.o. in the National Court Register. On June 12, 2020, the Complainant called the Respondent as its former employee to “return the property owned by the Company”, i.a., correspondence, software specifications, patterns, notes, reports. On July 24, 2020, the Complainant called the Respondent for payment of the compensation for the damage that the Respondent as a former employee caused the Complainant. The disputed domain name was registered on September 20, 2018. The registration was masked by a proxy service, Domains By Proxy, LLC. The disputed domain name resolves to a website offering services for recruiters and job seekers. Under “Book a Demo” button, one can make an appointment with the Respondent. Whereas the data policy available at the website states the controller of the personal data is “The controller of your personal data is Toolbox for HR Sp. z o. Sp. K with number KRS: [ … ]. Our office is located in [ … ] Warsaw,Poland, at ul. Joachima Lelewela [ … ]”. 5. Parties’ Contentions A. Complainant First, the Complainant claims that it only realized that the disputed domain was registered by the Respondent in his own name in 2020. Before it assumed that the disputed domain name was registered, by the Respondent, in the Complainant’s name. The Complainant further asserts that the Respondent refused to provide it with access to the disputed domain name which resulted in an immediate termination of the employment contract with the Complainant. In the Complainant’s view, the Respondent and together with his team members pursued competitive activities, involving discussions on taking over the system operated under the “CV Timeline” name and mark, while being employed by the Complainant. Second, although the Complainant does not own a registered trademark identical or confusingly similar to the disputed domain name, it claims to have right to the “CV Timeline” unregistered mark. The Complainant asserts that it has created and developed an innovative system that automates early recruitment processes. Further, it contends that since the third quarter of 2018, the “CV Timeline” mark has been internationally promoted and used in the business. According to the Complainant, the system operated under the “CV Timeline” name and mark has between 5,000 and 6,000 users and the Chrome extension based on this system has over 2,000 active users. Third, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has no prior rights to use the disputed domain name, as the “CV Timeline” name and mark was created and used solely by the Complainant. Further, the Complainant submits that the Respondent is using the disputed domain name to offer the same services as those offered by the Complainant and that the Respondent does not even try to avoid confusion with the Complainant’s business. Finally, the Complainant asserts that the disputed domain name was registered and has been used in bad faith. According to the Complainant, the disputed domain name was registered in the Respondent’s name without its knowledge and consent. As a result, the Complainant has been deprived of access to an email, calendar and other documents related to the disputed domain name. B. Respondent First, the Respondent contends that he and Marcin Smoliński (the Complainant’s management board member) were business partners exploring the possibility of creating a company for a project. He further asserts that he bought the disputed domain name for an early stage prototype and paid all of fees related to its maintenance. He claims that he has never transferred a right to the “CV Timeline” logo to the Complainant. Second, the Respondent submits that the Complainant has no rights to the “cv timeline” name. He points out the fact that the Respondent has never tried to obtain a trademark registration for this name. The Respondent finds the Complainant’s evidence of use of the “cv timeline” name insufficient to prove the Complainant’s rights. Moreover, according to the Respondent, it seems unplausible that the Complainant realized that the disputed domain name was registered by the Respondent, only in 2020, when the Respondent established CVT Sp. z o.o. Third, the Respondent claims that he is making a legitimate noncommercial use of the disputed domain name, as it is used for internal issues only, e.g. emails. The Respondent emphasizes that its business, a software house is not a competitor of the Complainant’s HR services. Finally, the Respondent asserts that he has not registered or used the disputed domain name in bad faith. According to the Respondent, the Complainant did not use the “cv timeline” name in 2018 when the disputed domain name was registered. Moreover, he contends that the Complainant has not oppose to the registration. The Respondent claims that while using the disputed domain name, he does not refer to the Complainant’s goods and services. 6. Discussion and Findings To succeed in its claim, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights to or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Identical or Confusingly Similar Under this head, the Complainant is required to show that it has UDRP-relevant rights for purposes of standing to bring a case and secondly that such trademark is identical or confusingly similar to the disputed domain name. The Complainant relies upon rights in respect of the unregistered name and mark “CV Timeline”. According to section 1.3 of the WIPO Overview 3.0, in order to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Further, this source provides for an explanatory list of relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) which includes factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. It is emphasized that with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, UDRP panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services. Moreover, the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier. In this case, the Complainant presented evidence confirming that the “CV Timeline” name and mark has been used in relation to an innovative system that automates early recruitment processes created by the Complainant since at least October 2018. In the email of October 29, 2018, the Respondent, using the Complainant’s email services, wrote to Recruiter.com Magazine: “For the first few months we brainstormed different ideas and improvements together with 25 recruiters that work here at Toolbox For HR and as result we’ve launched www.cvtimeline.com about 2 months ago which has been positively met with an organic user growth of about 3000 users in the first 2 months.” The system was promoted in industry media from at least December 4, 2018 and on LinkedIn by Marcin Smoliński who introduced himself as a founder of the Complainant. There are relevant invoices on the record confirming that the Complainant invested in promoting the name and mark. Within nearly two years, the system offered under the name and mark has gained over 5,000 registered users, including users from London, Paris, Amsterdam, and Warsaw. The Complainant submitted invoices issued for users who opted for paid services. Moreover, while not necessarily dispositive as to use in commerce, the records of communication between the Complainant’s employees, who cooperated with the Respondent on taking over the system offered under the “CV Timeline” name and mark, supports the conclusion that the Respondent had the Complainant in mind when registering the disputed domain name. The Panel finds that in case of products online services addressed to recruiters, the range of recognition that was gained by the Complainant is sufficient to establish rights for the purpose of standing in the present UDRP proceedings. Given that the disputed domain name includes the relevant name and mark in its entirety, the Panel finds that the disputed domain name is identical to the same and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following: (i) before any notice 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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. The Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Contrary to the Respondent’s assertions regarding alleged noncommercial use of the disputed domain name (such as internal emails), the evidence collected on the record proves that the Respondent uses the website i.a., for organizing meetings with potential clients who are interested in services for recruiters and job seekers offered on the website (the same service as those offered by the Complainant). Moreover, the Complainant is indicated as a processor of personal data in the data policy published on the website under the disputed domain. Consequently, the Panel finds that the Respondent tries to use the goodwill associated with the relevant name and mark and mislead the Internet users as to the entity which actually offers services for recruiters and job seekers under the disputed domain name. In the light of above, the Panel accepts the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name. Typically, a complainant would not prevail on this aspect of the Policy if its trademark rights post-date the creation date of the disputed domain name because the registrant could not have contemplated the complainant’s then non-existent right and thus could not have registered the domain name in bad faith (see the discussion at section 3.8.2 of the WIPO Overview 3.0). However, in this case, the Respondent registered a domain name identical to an offering that was being created and developed for the purpose of the company that he cooperated with on the basis of a B2B contract in his own name and attempted to hide it under the privacy shield. Subsequently, the Respondent organized a team to take over the system created and developed. As stated by the Respondent during the internal communication with his team members who at later point in time established a company which apparently uses the disputed domain: “I would not have opened this company if was not confident that we will be getting paid for CV Timeline”. The evidence collected confirms that the Respondent had insider knowledge about the system being created and developed under the subject mark and by registering the disputed domain name in his own name he planed to unfairly capitalize on the Complainant’s rights. Even if it was the Respondent who originally came up with the idea of the “CV Timeline” name and/or logo, under the B2B contract concluded between the parties, the Respondent assigned all rights created while performing services for the Complainant which, in the Panel opinion extends also to the right to the “CV Timeline” name. Although the contract concluded between the parties in 2018 does not specify a date, in the light of Respondent’s letter of October 25, 2018, it is evidenced that the parties cooperation took a while before October 2018. It is further supported by the parties communication from March 2018, in which Marcin Smoliński, acting on behalf of the Complainant, offered the Respondent mutual cooperation on the terms later reflected in the B2B contract. Moreover, under the B2B contract, the Respondent was entitled to return of all additional costs incurred while performing the services which includes the fees paid in relation to the disputed domain name registration. As it was explained in the section concerning the Respondent’s rights and legitimate interests, the evidence on the record confirm that the Respondent is using the disputed domain name to offer the same kind of services that the Complainant does. At the same time, the Respondent has not taken any actions to prevent the confusion of the Internet users who may easily believe that the services are actually offered by the Complainant. This amounts to bad faith use of the disputed domain name. In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. In conclusion, the Panel notes that this decision is based on the record that has been presented to him by the Parties, and that the Parties remain free to pursue this dispute or related business and/or contractual matters in court. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Piotr Nowaczyk
Sole Panelist
Date: December 22, 2020
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