The Complainant is J Limited of Dublin, Ireland, represented by LK Shields Solicitors, Ireland.
The Respondent is Marius Stanley, JobDone of Dublin, Ireland, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2016 via email and in hardcopy on October 17, 2016. On October 14, 2016, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On the same date, IEDR 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 .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was November 22, 2016. The Response was filed with the Center on November 18, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on November 30, 2016. 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 has operated a recruitment business in Ireland for more than 15 years through its website at “www.j”. The Complainant registered its domain name in 1998 and has operated and advertised its business under the mark or name “JOBS.IE” since 2000.
The Respondent has operated a competing on-line job and recruitment service in Ireland under the brands “Jobs Done” and “Jobs Ireland” through various domain names since 2001. It registered the disputed domain name on November 14, 2013. 5. Parties’ Contentions A. Complainant
The Complainant says that its “JOBS.IE” name or mark is a protected identifier for the purposes of the Policy. It notes that since 2000 it has used the JOBS.IE name as its registered business and company name in relation to its on-line recruitment and website services business. Although it does not own a registered trade mark for its JOBS.IE mark and only has pending trade mark applications, it submits that as a consequence of very substantial use over a period of many years it has developed a significant and protectable goodwill in relation to this name or mark in Ireland.
The Complainant has submitted considerable evidence of its use of its name and mark in Ireland but in summary submits that it is one of the three top job websites in Ireland for both employers and jobseekers in terms of traffic and that based on figures derived from Google Analytics it has approximately 1.5 million sessions per month on its desktop and mobile site; approximately 650,000 unique visitors to its desktop and mobile site per month. It says that for the time period between 2005 to present, the Complainant has had an
average of 3,887 employer customers/advertisers in relation to its J business and that it has spent approximately EUR 25,444,727 on the Complainant’s website and its business bearing the name of the Protected Identifier, including more than EUR 2,000,000 on marketing and advertising in a whole variety of media across Ireland since 2006. The Complainant has also provided evidence of market survey reports from 2005 to 2014 which it says suggest that there is a high consumer recognition rate of its JOBS.IE brand in the Irish marketplace.
The Complainant submits that the disputed domain name is confusingly similar to its JOBS.IE protected identifier and that it only differs by the incorporation of an additional set of the letters “.ie” which it says amounts to the Respondent using it to capitalise on errors made by Internet users seeking the Complainant’s website and which amounts to a classic case of typo squatting.
The Complainant submits that the Respondent intentionally registered the disputed domain name in order to capitalise on the goodwill attaching to the disputed domain name and the Complainant’s JOBS.IE name and mark. In this regard the Complainant notes that from at least February 2014 to November 2014, the disputed domain name was the site of a company that was not called “J” or “Jobsie”; rather, the Respondent’s website featured the words “Jobs Éire” during that time period. At other times, the disputed domain name diverted to other “.IE” domain names registered in the name of the Respondent which also did not trade as “J”, including and .
The Complainant, through its solicitors, says that it wrote to the Respondent in 2014 to complain about this conduct. The Complainant asserts in this letter that the Respondent not only chose a domain name that is confusingly similar to the Complainant’s domain name, but also the Respondent chose an overall design and layout for its website at the disputed domain name that was similar to the design of the Complainant’s website, as it existed from approximately 2004 to December 2015. In addition the Complainant asserts that the Respondent has targeted the Complainant’s customers in misleading email campaigns which feature the JOBS.IE protected identifier. In particular, on December 9, 2015, the Respondent sent a scam email targeting the Complainant’s jobseeker and employer customers using “JobsIE” in the subject line and body of the email. It says that at least one of the Complainant’s employer customers fell for the Respondent’s scam such that they paid a subscription fee of EUR 650 to the Respondent in the mistaken belief that they were paying the fee to the Complainant. This customer brought the email scam to the attention of the Complainant, and demanded a refund from the Respondent. However, the Respondent never replied to the request for a refund.
None of this amounts to legitimate use of the disputed domain name according to the Complainant. It further says that it has neither authorised or licensed the Respondent to use its JOBS.IE mark and is in no way affiliated with the Respondent or its businesses. The Complainant notes that the Respondent has never made good faith preparations or used the disputed domain name in connection with a bona fide offering of goods or services and that “j” is not registered by the Respondent, or upon its behalf, as a business name in Ireland. It says that at all material times, the Respondent’s website was either the site of a job website trading under the name “Jobs Éire”, redirected to “www.” or “www.” or was offline. The Registrant’s efforts to attract users to its website for commercial gain through confusion with the Complainant’s protected identifier demonstrates that the disputed domain name is not being used, and was never used or intended for use, in connection with either the good faith offering of goods or services or the operation of a business.
The Complainant submits that the Respondent must have been aware of its JOBS.IE mark and domain name when it registered the disputed domain name in 2013, more particularly in circumstances that the parties are competitors in the same geographical market. The Complainant then submits that either the Respondent registered the disputed domain name for the purpose of licensing renting or selling it, in order to interfere with the Complainant’s business, or to confuse and divert Internet users to its website for its own commercial gain. The Complainant refers to the Respondent’s history of website use as set out above, the fact that it chose an overall design and layout for its website at the disputed domain name that was similar to the design of the Complainant’s website, as it existed from approximately 2004 to December 2015 and the evidence of targeting of the Complainant’s customers and asserts that this amounts to use of the disputed domain name in bad faith.
The Complainant says that, despite redirecting the disputed domain name to other websites, the Respondent was nonetheless still, as of 2015 and early 2016, targeting the Complainant’s customers and disrupting its business. When it realised this the Complainant took further action. First, in or around autumn 2015, it redesigned its website with new logos and a new colour scheme. The purpose of this re-design was to make it clear to the Complainant’s customers that the Complainant is in no way affiliated with the Respondent. On February 19, 2016, the Complainant wrote an email to its customers informing them that the Respondent, using one or more of the names J, JobsIE, JobI and JobsEIRE Ireland, had no connection with J or its parent company Saongroup. Shortly following the Complainant’s site redesign and email to its customers, in or around February 2016, the Respondent de-activated its “www.” website (though the DDN still redirects to other domain names). The Complainant says that it may be inferred from the Respondent’s action in deactivating its site that the Complainant’s website redesign and alert to its customers meant that it became more difficult for the Respondent to lure the Complainant’s customers to the Respondent’s website through its misrepresentations. B. Respondent
The Respondent says that its business operates in the Irish job sector under two brands, Jobs Done and Jobs Ireland and that it has operated in the Irish online job-board and recruitment service for 16 years. It says that the disputed domain name was purchased in good faith to be used as a generic abbreviation to its “Jobs Ireland” brand. The Respondent submits that it is very concerned about individual ownership of what it considers to be generic e-commerce terminology for the exclusive use of one party’s website offerings and that it considers the disputed domain name to be part of its important and “all of island” Jobs Ireland brand offering. It notes the importance and popularity of “j” as a searchable term or brand on the Internet and that it has managed the disputed domain name on divert for a number of years without interference from the Complainant or its associated companies. However, apart from the general submission that the disputed domain name is generic and that the Complainant should not have exclusive use of “j” in a domain name and that the Complainant also operates the website “www.irishj” it has not made submissions specifically under the first element of the Policy concerning the Complainant’s assertions of ownership in the “JOBS.IE” name and mark and its qualification as a “protected identifier” under the Policy.
The Respondent submits that it has no plans to use the disputed domain name but reserves the right to do so. It says that “JobsIE” is a catchy phrase and that it has promoted this along with its Jobs Ireland brand and has 15,000 Twitter followers and 15,000 Facebook followers and other social media followers and that it is using the brand internationally.
It contends that it has a legal right to the identifier “JobsIE” and “JobsIreland”. It says that “JobsIE” is generic and that in holding the disputed domain name it is protecting its brand. It also asserts that “jobsIE” is a registered business name. It submits that the IEDR gave it the legal right to trade under the disputed domain name knowing that employment in Ireland was its industry sector. It says that it complies with all legal requirements of the “.ie” country code Top-Level Domain register operated by the IEDR and that it is entitled to own the disputed domain name and has taken all reasonable and timely actions to avoid conflict in the domain name sector. 6. Discussion and Findings A. Identical or Confusingly Similar
The first element of the Policy requires that the Complainant demonstrates that it owns a “protected identifier” in terms of the Policy. Although the Complainant does not own a registered trade mark for its JOBS.IE mark it asserts that sufficient goodwill attaches to its mark in Ireland to afford it protectable common law rights under the tort of passing-off.
The Complainant has submitted substantial evidence of its use of the JOBS.IE name and mark since long prior to the registration of the disputed domain name. It owns a registered business name and company name incorporating its JOBS.IE name. Its website that prominently features this name and mark appears to have a very substantial Internet following and it, based on figures derived from Google Analytics, has provided evidence that it has approximately 1.5 million sessions per month on its desktop and mobile site and approximately 650,000 unique visitors to its desktop and mobile site per month. It says that for the time period between 2005 to present, the Complainant has had an average of 3,887 employer customers/advertisers in relation to its J business and that it has spent approximately EUR 25,444,727 on the Complainant’s website and its business bearing the JOBS.IE name and mark, including more than EUR 2,000,000 on marketing and advertising in a whole variety of media across Ireland since 2006. It has also provided an example of an advertising campaign featuring its JOBS.IE name and mark. In the Panel’s view this amounts to sufficient evidence to support the Complainant’s case that its JOBS.IE mark or name has through substantial use developed sufficient goodwill that it would be protectable under the law of passing-off in Ireland and is therefore a protected identifier under the Policy.
The disputed domain name wholly incorporates the Complainant’s protected identifier with the addition of the letters “ie” before the second level domain name root “.ie”. This addition does not distinguish the disputed domain name from the protected identifier and the impression left by the disputed domain name is clearly of the Complainant’s JOBS.IE name and mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected identifier and the Complaint succeeds under the first element of the Policy. B. Rights in Law or Legitimate Interests
The Complainant has submitted that it is not affiliated with or associated with the Respondent. It says that the Respondent has never made good faith preparations to use JOBS.IE as a mark or used the disputed domain name in connection with a bona fide offering of goods or services. It also says that “j” is not registered by the Respondent, or upon its behalf, as a business name in Ireland. It says that at all material times, the Respondent’s website was either the site of a jobs website trading under the name “Jobs Éire”, or redirected to “www.” or “www.”, or was offline.
The Complainant has also submitted that this amounts to a case of typo-squatting in which the Respondent, as a competitor in the Irish marketplace, has intentionally registered the disputed domain name in order to confuse and divert Internet users to its job seeker websites. The Complainant has noted various periods during which the disputed domain name resolved to the Complainant’s sites and the past history of its correspondence with the Respondent in this regard. Further, the Complainant alleges that on December 9, 2015, the Respondent sent a scam email targeting the Complainant’s jobseeker and employer customers using “JobsIE” in the subject line and body of the email. It says that at least one of the Complainant’s employer customers fell for the Respondent’s scam such that they paid a subscription fee of EUR 650 to the Respondent in the mistaken belief that they were paying the fee to the Complainant.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. However, while not addressing its arguments to each individual element of the Policy, the Respondent effectively says in rebuttal that while it operates under the “Jobs Done” and “Jobs Ireland” names and has operated in the Irish online job-board and recruitment service for 16 years, it purchased the disputed domain name in good faith to be used as a generic abbreviation to its “Jobs Ireland” brand. It further asserts that the disputed domain name is generic e-commerce terminology not intended for the exclusive use of one party’s website offerings and that it considers the disputed domain name to be part of its important and “all of island” “Jobs Ireland” brand. This said, the Respondent asserts that it has no immediate intention to use the disputed domain name in the future.
It is apparent that the Respondent does not operate under the “J” brand and has developed no rights in it. The Respondent appears to be operating under a misapprehension that the “J” brand is generic e-commerce terminology and the legal and administrative basis on which it was allocated the domain name in the first place. Even in circumstances of the Respondent’s “all of Ireland” business and that the expression “j” is a popular and desirable search term made up of commonly used terms, the Respondent has not made out a case that in the circumstances it has a right or legitimate interest to use the term in the disputed domain name in the circumstances of the Complainant’s prior user and there is no legal right that operates to reserve such a term for use by all players on the basis alone that it is a generic expression.
The fact remains that the Respondent, by its own admission, does not trade under the disputed domain name and therefore cannot have developed a protectable goodwill in this name or mark under the law of passing-off. By contrast the Complainant has, as set out above, in the Panel’s view and as a consequence of substantial and longstanding use, developed a prior protectable goodwill that attaches to its “JOBS.IE” name or mark. Further and as described below, the Respondent, a direct competitor of the Complainant who operates in the same market, appears to have used the disputed domain name containing the Complainant’s mark in order to confuse and divert Internet users for its own commercial benefit. This is not bona fide activity and the Panel accordingly finds that the Respondent has not rebutted the Complainant’s case that it has no rights or legitimate interests in the disputed domain name. As a result the Complaint succeeds under the second element of the Policy. C. Registered or Used in Bad Faith
The Respondent registered the disputed domain name in November 2013 many years after the Complainant registered its domain name in 1998 and started operating under the name, style or mark “JOBS.IE” in 2000. As noted above, the Respondent is a direct competitor of the Complainant in Ireland and the Panel infers that it must have been well aware of the Complainant’s name and mark and business at the time of registration of the disputed domain name.
By its own admission the Respondent trades under the brands “Jobs Done” and “Jobs Ireland” and not “j”. Its reason in late 2013 for registering a domain name that wholly incorporated its competitor’s name or mark with the addition of a further set of “ie” initials can only be inferred in the circumstances as being to take advantage of the goodwill attaching to the Complainant’s JOBS.IE name or mark, whether this be to enhance its own search results, to take advantage of the possibility that Internet users would misspell the Complainant’s domain name or to seek to actively confuse and divert Internet users to its own websites and for its own commercial purposes. It seems to the Panel that this is a classic case of typo squatting and the Panel finds that the Respondent registered the disputed domain name in bad faith.
Under paragraph 2.1.4 of the Policy using a domain name to intentionally attract Internet users to website by creating confusion with a protected identifier may be considered as evidence of registration or use in bad faith. In this case the evidence submitted by the Complainant suggest that even though the Respondent may not currently be using the disputed domain name to divert Internet users to its websites, it has done so for extended periods in the past.
In particular, the Complainant’s evidence, which has not been explained by the Respondent, suggests that it chose an overall design and layout for its website at the disputed domain name that was similar to the design of the Complainant’s website, as it existed from approximately 2004 to December 2015. In addition, the Complainant has asserted that the Respondent targeted the Complainant’s customers in misleading email campaigns which featured the JOBS.IE protected identifier and in December 2015 sent a scam email targeting the Complainant’s jobseeker and employer customers using “JobsIE” in the subject line and body of the email. Apparently, at least one of the Complainant’s employers paid a subscription fee of EUR 650 to the Respondent in the mistaken belief that they were paying the fee to the Complainant.
In the Panel’s view this amounts to clear evidence of use of the disputed domain name by the Respondent to intentionally attract Internet users to its website by creating confusion with the Complainant’s protected identifier. As such this also amounts to evidence of use of the disputed domain name in bad faith.
As a consequence the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: December 14, 2016
Full & Egal Universal Law Academy