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Arbitration and Mediation Center
CareerBuilder, Inc. v. John Morgan
Case No. D2003-0907
1. The Parties
The Complainant is CareerBuilder, Inc., a company with its principal place
of business in Reston, Virginia, United States of America (hereinafter
"the Complainant"). It is represented by the law firm Sonnenschein Nath & Rosenthal
of Chicago, Illinois, United States of America.
The Respondent is John Morgan, residing at Sanibel, Florida, United States of America
(hereinafter "the Respondent").
2. The Domain Name and Registrar
The domain name at issue in this proceeding is <carerbuilder.com>.
The Registrar is eNom.com of Bellevue, Washington, United States of America
(hereinafter "the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
by email on November 13, 2003, and in hard copy on November 17, 2003.
On November 14, 2003, the Center transmitted by email to the Registrar
a request for registrar verification in connection with the domain name at issue.
The Registrar did not verify the Center’s request; accordingly, on November 20, 2003,
the Center independently verified, via the WHOIS database, that the disputed
domain name was registered with eNom, that the Respondent, John Morgan, was
the current registrant of the disputed domain name, and that the status of the
registration was locked. The Center subsequently checked the compliance of the
Complaint with 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 November 20, 2003.
In accordance with the Rules, Paragraph 5(a), the due date for the Response
was December 10, 2003. The Respondent did not submit any Response.
Accordingly, the Center issued a Notification of Respondent Default on December 15, 2003.
The Center appointed D. Brian King as Sole Panelist in this matter
on December 29, 2003. The Sole Panelist 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 facts relevant to the current dispute are set out in the Complaint. Considering
the allegations therein, the evidence produced and the fact that the Respondent
has not filed a Response contesting the Complainant’s contentions, the Panel
finds the following facts to have been established.
The Complainant is a well-known online recruiting company and first registered
the CAREERBUILDER mark in the United States in 1996 (see Complainant’s
exhibit 4). The Complainant subsequently obtained registered trademarks for
CAREERBUILDER (and variations thereof) in Mexico, Canada, Australia and
the European Union (see id.).
The Complainant carries out its business on the Internet primarily through
its website "www.careerbuilder.com", which it has been using since
1996 (see Complainant’s exhibits 3 and 5). The Complainant
also owns and uses in its business the following domain names: <careerbuilder.org>,
<careerbuilderinc.com>, <careerbuilderit.com>, <careerbuilderpsa.com>,
<careerbuildermail.com>, <careerbuilderinfo.com>, <careerbuilderachieve.info>,
<careerbuildernetwork.info>, and <thecareerbuildernetwork.info>
(see Complainant’s exhibit 3).
The Respondent, who resides in the U.S., registered the disputed domain name
on October 12, 2000, i.e., long after the Complainant registered its
marks with the United States Patent and Trademark Office (see Complainant’s
exhibit 3). By that time, the Complainant had built up substantial good will
in its CAREERBUILDER mark through continuous use in Internet commerce and the
expenditure of approximately US$200 million on marketing and promotional
efforts (see Complainant’s exhibit 3, para. 12).
The disputed domain name is currently in use and automatically redirects the
user to <americansingles.com>, an online dating service.
5. Parties’ Contentions
The Complainant relies on the above facts and contends, inter alia,
that the three elements of Paragraph 4(a) of the Policy have been met.
First, the Complainant argues that the disputed domain name is confusingly
similar to its registered CAREERBUILDER mark. It argues that the misspelling
of its mark (carerbuilder) does not render the disputed domain name sufficiently
distinct to avoid a likelihood of confusion.
Next, the Complainant submits that the Respondent has no rights or legitimate
interests in the disputed domain name. The Respondent is not a licensee of the
Complainant, nor has he otherwise been authorised by the Complainant to use
its mark. The Complainant further argues that the Respondent was not known by,
or doing business under, the name "CarerBuilder" prior to the registration
of the disputed domain name.
Finally, the Complainant asserts that the Respondent registered and is using
the disputed domain name in bad faith. The Complainant alleges that the Respondent
has engaged in "typo-squatting," causing Internet users seeking the
Complainant’s website to be diverted to an unrelated site for the Respondent’s
commercial gain. Furthermore, the Complainant points, as an additional indicator
of bad faith, to the Respondent’s failure to make any reply to the Complainant’s
"cease and desist" letter dated June 16, 2003 (see
Complainant’s exhibit 8).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of
the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Notwithstanding the Respondent’s default, the Complainant retains the ultimate
burden of proof on each of these elements. They will be examined in turn below.
A. Identical or Confusingly Similar
The domain name at issue is confusingly similar to the Complainant’s registered
trademark CAREERBUILDER, as well as to its earlier-registered domain name, <careerbuilder.com>.
The disputed domain name is, indeed, identical to the Complainant’s mark, but
for the omission of an "e" in the word "career." Numerous
Panels have held that where a domain name consists of a common misspelling of
a Complainant’s mark, that is sufficient to make the domain name "confusingly
similar" within the meaning of the Policy. See CareerBuilder,
LLC v. Azra Khan, WIPO Case No. D2003-0493
(August 5, 2003), at page 3; CareerBuilder, Inc. v. John Zuccarini,
WIPO Case No. D2002-0282 (May 21, 2002),
at page 4; Caesars World, Inc. v. George Godoy and Ceasars Palace Casino,
WIPO Case No. D2002-0050 (March 22, 2002),
at page 3; Geocities v. Geociites.com, WIPO
Case No. D2000-0326 (June 19, 2000), at page 3. Accordingly, the
Panel concludes, without difficulty, that the disputed domain name is confusingly
similar to the Complainant’s registered mark. The first element under Paragraph
4(a) has thus been met by the Complainant.
B. Rights or Legitimate Interests
The Panel is further satisfied that the Respondent has no rights or legitimate
interests in respect of the disputed domain name. In particular, the Panel finds
that none of the three circumstances identified in Paragraph 4(c) of the Policy
as indicative of rights or legitimate interests is present here.
First, the record does not support the conclusion that the Respondent is using
the disputed domain name in connection with a bona fide offering of goods
or services. To be sure, the Respondent is using the domain name for commercial
purposes; the domain name, when accessed, automatically redirects users to a
commercial online dating service. However, in the circumstances here, such commercial
use cannot be deemed to be bona fide. The Respondent has no permission
or license to use the Complainant’s mark, and he was on constructive notice
of the Complainant’s rights in the CAREERBUILDER mark at the time he registered
the disputed domain name. This follows from the Complainant’s registration of
CAREERBUILDER as a trademark in 1996 in the United States, the domicile
of both the Complainant and the Respondent. See 15 U.S.C. §
1072 (trademark registration constitutes constructive notice of the registrant’s
claim of ownership thereof); The Step2 Company v. Softastic.com Corp.,
WIPO Case No. D2000-0393 (June 26, 2000),
at page 4. Indeed, the Respondent almost certainly had actual knowledge of the
Complainant’s rights in the mark, given the Complainant’s extensive use of it
in Internet commerce since 1996. In these circumstances, the Respondent’s use
of the disputed domain name does not constitute bona fide commercial
Second, there is no evidence to suggest that the Respondent has "been
commonly known" by the disputed domain name. The name "CarerBuilder"
(or even "CareerBuilder") has no apparent association with the Respondent,
his business, or the dating service website to which the disputed domain name
redirects Internet users.
Finally, the disputed domain name is being used for commercial purposes and
hence does not meet the "non-commercial or fair use" criterion.
Accordingly, the Panel concludes that the Complainant has satisfied the second
element under Paragraph 4(a) in the present case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of
(i) circumstances indicating that the Respondent has registered or acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of documented out-of-pocket costs directly
related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) the Respondent has registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its website 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 the Respondent’s
website or location, or of a product or service on the website or location.
For purposes of the Policy, a finding of any of the four circumstances listed
in Paragraph 4(b) will be sufficient to establish registration and use
in bad faith. Those four circumstances are, furthermore, not exclusive, and
other circumstances may likewise lead, in a particular case, to a finding of
bad faith registration and use. See CCA Industries, Inc v. Bobby R.
Dailey, WIPO Case No. D2000-0148 (April 26, 2000),
at page 3.
In the present case, the Panel is satisfied that the Complainant has sufficiently
established the circumstance listed in Paragraph 4(b)(iv) of the Policy.
It has already been established above that the disputed domain name is confusingly
similar to the Complainant’s mark and that the Respondent has no rights or legitimate
interests in the domain name. Furthermore, the site is being used for commercial
The determinative question, then, is whether it can be inferred that in registering
and using the disputed domain name, the Respondent has intentionally attempted
to trade on the Complainant’s mark by creating a likelihood of confusion. The
Panel concludes that such an inference properly arises on the evidence here.
Considering that the Respondent was on at least constructive notice of the Complainant’s
rights in the name "CareerBuilder" at the time he registered the disputed
name, the lack of any apparent connection between the name and the Respondent’s
online dating business, and the fact that the disputed domain name constitutes
a common misspelling of the Complainant’s mark, a reasonable inference arises
that the Respondent registered and used the domain name in an attempt to misdirect
internet users to his own site for commercial gain. This inference is strengthened
by the Respondent’s failure to make any response to the Complainant’s "cease
and desist" letter on June 16, 2003 (see above and Complainant’s
The Panel lastly notes that the Respondent had an opportunity to explain his
legitimate interest in the use of the domain name, if any, by submitting a Response
to the Complaint. He has failed to do so, and this failure justifies the inference
that any response he could honestly have given would have been consistent with
the findings made against him above.
Based on the foregoing, the Panel concludes that bad faith registration and
use have been sufficiently established with respect to the domain name <carerbuilder.com>
in accordance with Paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the
Policy and Paragraph 15 of the Rules, the Panel orders that the disputed
domain name, <carerbuilder.com>, be transferred to the Complainant.
D. Brian King
Dated: January 13, 2004
1. As noted, the disputed domain name resolves
to a dating website, . The Terms and Conditions under the
heading "Registration & Subscription" on the website state as follows: "Although
you may register as a Member of the Service for free, if you wish to communicate
with other members and use certain other parts of the Service, you must become
a subscriber and pay the fees that are set out in our price list."