ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Passion Group Inc., of 25 Imperial Street, Suite 500, Toronto, Ontario, Canada M5P 1B9. The respondent is Usearch, Inc., of 13 Sunrise Drive, Whippany, New Jersey, 07981, USA. The contested domain name is jobpostings.com and the registrar is Network Solutions Inc.
2. Procedural History
The complaint was filed with eResolution on-line and in hardcopy on June 7, 2000. Payment was received that day. eResolution's clerk confirmed that the registrar is Network Solutions Inc, the Whois database contains all the required contact information, the contested domain name resolves to an active web page and the complaint is administratively compliant. An email was sent that day to the registrar by the clerk to confirm the name of the billing contact and to obtain a copy of the registration agreement. That information was received on June 9, 2000.
The clerk then sent a copy of the complaint and cover sheet to the respondent in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (« the Rules »).
On June 9, 2000 the clerk fulfilled eResolution's responsibilities under Paragraph 2(a) in connection with forwarding the complaint to the respondent. That date is the commencement date of the administrative proceeding and that same day the clerk notified the complainant, the respondent, the registrar and ICANN of that date.
The response was filed by email on June 28, 2000 and in hardcopy on June 30, 2000. On July 5, 2000 the respondent requested a 3 member panel, paid the additional fees and submitted its list of panelists.
On July 10, 2000, the complainant submitted its list of panelists and on July 13, 2000 paid corresponding additional fees. On July 13, 2000 the clerk informed the parties of the selection of the 2 co-panelists for this case, Mr. David Sorkin and Mr. Geert Glas, and invited them to act. On July 14, 2000 they agreed and filed declarations of independence and impartiality.
On July 14, 2000 the clerk submitted to the parties the names of five (5) candidates for third panelist and sought their ranking in order of preference. On July 17, 2000 the clerk received the parties' preferences and the Director of Arbitration and Mediation Services selected Mr. Alan L Limbury as President of the panel for this case in accordance with eResolution Supplemental Rule art.8(e). That day the clerk invited Mr. Limbury to act and on July 18, 2000 Mr. Limbury agreed and filed a declaration of independence and impartiality.
On July 20, 2000 the parties, the registrar and ICANN were notified of the appointments and that, save in exceptional circumstances, a decision was to be handed down on August 2, 2000.
On July 20, 2000 the complainant sought to submit further information to the panel concerning changes to the respondent's web site following its receipt of the compliant. On July 28, 2000 the panel agreed and also invited, within 3 working days, any further submission the complainant wished to make on the issue of bad faith registration, giving the respondent 3 working days to respond. The complainant provided its further information and submission on July 28, 2000 and the respondent replied on August 2, 2000.
The panel extended the time for a decision to August 10, 2000.
3. Factual Background
Since May 1998, the complainant (which was incorporated in March 1999) and its predecessors in title (two partnerships, whose partners established the complainant) have used the name JOBPOSTINGS in connection with a job-related careers magazine for students, first published in Canada in October 1998 and in the USA in October 1999. Between them, the Canadian and USA issues of the magazine presently run to over 100,000 copies. Between October 1998 and April 2000 over 600,000 copies of JOBPOSTINGS magazine were published. The magazine is distributed mostly free to students. Substantial advertising revenue is generated as a result of the complainant's promotional activities using the JOBPOSTINGS name, which have included advertisements on two occasions in Canada's national newspaper, the Globe and Mail (circulation over 250,000); distribution of over 230,000 posters in universities and colleges throughout North America; sponsorship of conferences and participation at exhibitions. The complainant also engages in consultancy services using the name.
On or about 16 May 1996, some two years before the first use of the name JOBPOSTINGS by the partnership which later became a division of the complainant, Mr Dan Parisi, the majority owner of the respondent Usearch Inc., registered the disputed domain name "jobpostings.com" on behalf of the respondent. Shortly thereafter, "jobpostings.com" was linked to a website where employment search engines could be found. It was later one of several domain names merged by Mr Parisi into a website at "infolook.com", which included a similar "jobpostings.com" page linked to other employment sites.
In May 1997, Mr Parisi bought the domain name "whitehouse.com" (which was being used as a comedy site) from a third party. In September that year Mr Parisi converted that site into an adult entertainment site and changed the primary link for many existing domain names from "infolook.com" to "whitehouse.com". At the "whitehouse.com" site Internet users can look at free adult photographs or, for $19.99 per month, view more adult entertainment photos and videos. There is a free section called "MyWhitehouse" which offers sports score, stock quotes and links to other services. In his affidavit of June 26, 2000, Mr Parisi testified that a page similar to the original "jobpostings.com" site links to another site where employment information can be found. The "whitehouse.com" site receives over 100,000 visitors per day and has approximately 10,000 paying members. In 1999 it generated over $1 million in revenue. The possibility of the respondent becoming a public company was discussed by Mr Parisi with investment bankers and was reported in October 1999 in terms which described "whitehouse.com" as "one of the biggest pornography sites on the Internet" and adult sites as "some of the biggest traffic generators on the Web", whose popularity "makes them among the most potentially lucrative enterprises, analysts have said".
4. Parties' Contentions
Paragraph 4(b)(iv) bad faith
Paragraph 4(b)(ii) bad faith
(a) using a domain name "merely for the purpose of redirecting visitors to a different site" can constitute a legitimate use of the name: Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc. (eResolution case AF-0104);
(b) there is no requirement that a domain name relate to the nature of the products or services offered. To hold otherwise would be to prevent the word "apple" being used to sell computers and would deprive owners of legitimately registered domain names of the opportunity to increase traffic at their web sites, like preventing a person from opening more than one store or having more than one telephone number;
(c) the adult entertainment industry is a legitimate business protected by the First Amendment to the US Constitution, among other things. The respondent's adult entertainment business existed for a year before the complainant's business began and is a legitimate enterprise with a large customer base and substantial revenues. The site offers other services such as sports scores, stock quotes and links to employment service, i.e. job postings. Thus, while perhaps controversial, there is a real business at the site offering bona fide goods and services;
Reverse domain name hijacking
(a) misleadingly and repeatedly contending it has a trademark in the name "jobpostings" when it is apparent from the complaint that the complainant either has not applied for or has been denied one on the ground that it is too generic. See Qtrade Canada v. Hydro Bank, (supra) where overstating the status of the complainant's trademark application led to a finding of bad faith and reverse domain name hijacking;
(b) the complainant commenced this proceeding only after the respondent rebuffed its attempts to purchase the disputed domain name. See also Qtrade;
(c) the complainant is seeking to obtain rights that it likely could not obtain from the US Patent and Trademark Office because the name is generic;
(d) the complainant has failed to describe clearly to the panel the composition of its alleged mark;
(e) the complainant seeks to advance the illogical position that it has superior rights in a domain name that was registered two years before it was even in business.
Complainant's reply on reverse domain name hijacking
5. Discussion and Findings
Whether the Policy protects unregistered trademarks and service marks
Had ICANN intended the Policy to be restricted to cases involving only registered trademarks or service marks, it could easily have used narrower language than "a trademark or service mark in which the complainant has rights". The Panel finds the Policy applies to marks in which there are common law rights as well as to marks in which there are rights arising from registration.
Whether the complainant has rights in the trademark JOBPOSTINGS
Although there is some confusion over whether the complainant has, since 1998, always used the single, unspaced word "jobpostings" or the two words "job" and "postings" together as a trademark, there is evidence of some use by the complainant of the single word, as in the domain name "jobpostings.net" and in the stylized form "jobpostings".
The word JOBPOSTINGS is descriptive of the content of the magazine and of the nature of the advisory services offered by the complainant. It must be doubted whether it is capable of distinguishing the complainant's advisory services from similar advisory services of others. As the name of the complainant's magazine, having regard to the number of copies published within the student community of Canada and the USA since 1998 and the revenue generated from advertising, the complainant has established sufficient distinctiveness to be able, at common law, to prevent another magazine by the same name from being passed off as that of the complainant, although it would take only a small difference in the name to distinguish that other magazine from that of the complainant. This is the inherent weakness of using descriptive names as trademarks.
Thus the Panel finds the complainant does have rights in the trademark JOBPOSTINGS, albeit the protection that may be gained through enforcement of those rights is narrow.
Identity or confusing similarity
Strictly speaking, the trademark "jobpostings" is not identical to the domain name "jobpostings.com". However, as has been decided in many cases under the Policy, and under US trademark law, the two are "essentially" or "virtually" identical or, as the complainant contends, "sufficiently identical" for the purposes of the Policy. See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999), citing Public Serv. Co. v. Nexus Energy Software, Inc., 36 F. Supp. 2d 436 (D. Mass 1999), 1999 U.S. Dist. LEXIS 1994, No. 98-12589 (D. Mass. Feb. 24, 1999)(finding "energy-place.com" and "Energy Place" to be virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, ['epix.com'] is the same mark as ['EPIX']"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
The panel finds that the domain name "jobpostings.com" is essentially identical to the trademark "jobpostings." Accordingly, the complainant has proved element 4(a)(i) of the Policy.
The Policy informs the respondent in paragraph 4(a) that the complainant must prove that the following element is present:
"(ii) you have no rights or legitimate interests in respect of the domain name".
The complainant's submission that the domain name holder, if challenged, should have to demonstrate legitimate rights or interests in the name or lose the registration is contrary to the Policy.
Paragraph 4(c) provides, so far as relevant here:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrated preparation to use, the domain name in connection with a bona fide offering of goods or services, or& "
The respondent has established (Parisi affidavit paragraph 3 and Ex. C) that, shortly after the domain name "jobpostings.com" was registered in 1996, it was linked to a web site where "18 of the most popular employment search engines" could be found. The complainant did not start using its trademark until 1998 and the respondent first received notice of the dispute upon receipt of the complaint in June 2000.
These facts alone demonstrate the respondent's rights to and interest in the domain name.
The fact that the respondent subsequently made a different use of the domain name or may even have ceased to use it for some period prior to being notified of the complaint does not affect this finding.
The Policy makes it clear that any use of the kind described in paragraph 4(c)(i), if proved, "shall demonstrate" legitimacy, whatever may subsequently have occurred. Thus, it is unnecessary to consider under this heading whether the respondent's present use is bad faith use which cannot establish legitimacy, nor whether the respondent's present use involves misleadingly diverting consumers for commercial gain, the opposite of the circumstances contemplated in paragraph 4(c)(iii).
Since 1997 (one year before the first use by the complainant of the trademark), the domain name has been used, along with many others apparently unrelated to pornography, as a link to a pornographic or "adult entertainment" site operated for commercial gain. The idea of linking to such a site a domain name which, on its face, offers access to job-related information is designed, as the respondent says, to increase traffic at its adult entertainment site. There is clearly an element of misleading involved in this. The disabling of the "back" button on the user's browser indicates that the respondent's intent is to capture those who have been misled. In a general sense, this amounts to "bad faith" use of the domain name. But it may not be the kind of bad faith use for which the Policy provides a remedy to a complainant with a weak generic common law mark, especially where the respondent's activities predated the first use by the complainant of its mark.
The respondent is informed by the Policy that the element the complainant must prove is
"4(a)(iii) your domain name has been registered and is being used in bad faith".
Paragraph 4(b) provides:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:& "
There follow four circumstances, the first three of which relate to registration and the last of which relates to use.
The complainant does not allege circumstances within 4(b)(i) or (iii).
As to 4(b)(ii), because the registration of the domain name occurred before the first use by the complainant of the trademark, it could not have been done "to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name". This position remains unaffected even assuming the respondent has engaged in a pattern of such conduct (a necessary ingredient in 4(b)(ii)).
Paragraph 4(b)(iv) provides:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to you 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".
The complainant submits this is just what the respondent is doing and that the introductory words of paragraph 4(b) deem such use to be evidence of both bad faith registration and use. It would follow, on this argument, that subsequent bad faith use within 4(b)(iv) can transform earlier proved good faith registration into bad faith registration.
The respondent cites Telaxis Communications Corp. v. Minkle (WIPO case D2000-0005) where a link to a pornographic website was held to be an act of bad faith, but was not held to be evidence of bad faith registration. However, the pornographic site to which the disputed domain names were redirected in Telaxis was the site of a third party, not the site of the domain name holder, so 4(b)(iv) could not have applied so as to deem evidence of bad faith use to be also evidence of bad faith registration.
Panelist Sorkin addressed the relationship between paragraphs 4(a)(iii) and 4(b)(iv) in Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc.,( eResolution case AF-0104) as follows:
"The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all the improper purposes mentioned can be accomplished merely by passively holding a domain name.
The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name also have been registered in bad faith. This example thus appears to conflict with the rule set forth in paragraph 4(a)(iii). The language of paragraph 4(a)(iii) is clear, and the only reasonable interpretations are to regard the fourth example as a narrow exception to the preceding sub-paragraph's conjunctive rule, or to apply the conjunctive rule as it is written and disregard the example entirely".
The panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii) and 4(b)(iv) by the contrast between the introductory words of paragraph 4(c): "any of the following circumstances & shall demonstrate your rights or legitimate interests" and the introductory words of paragraph 4(b): "the following circumstances& shall be evidence of the registration and use of a domain name in bad faith".
This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith.
Here there is evidence that, shortly after registration and long before the first use by the complainant of its mark, the disputed domain name was linked by the respondent to a web site where employment search engines could be found.
The weakness of the complainant's trademark raises the question whether the present misleading use of the domain name to attract traffic to the respondent's web site is a general misleading of the public (consumers) or is creating a likelihood of confusion with the complainant's mark. Even accepting the evidence that some of the complainant's readers or customers thought they were contacting the complainant and were thus misled or confused by the respondent's use of the domain name, such evidence of use within 4(b)(iv) does not outweigh the clear evidence that the domain name was not originally registered in bad faith .
The panel finds the complainant has failed to prove bad faith registration and use.
Reverse domain name hijacking
As to the respondent's submissions in this regard:
(a) A common law trademark is sufficient to invoke the Policy. The complainant did not overstate its claim;
(b) Attempts to negotiate purchase before commencing an administrative proceeding should be encouraged. Such an attempt does not, without more, amount to bad faith. Here the complainant simply sought to buy the domain name;
(c) Whether the mark is generic was a live issue between the parties. The respondent's success in the proceeding does not justify a finding of bad faith in the complainant on this issue;
(d) The complainant produced material showing it used the name in more than one way but the panel does not regard this as evidence of bad faith; and
(e) There may be cases in which subsequently acquired common law trade mark rights could be found to prevail over a domain name so this argument was not illogical. It did not succeed in this case.
The panel does not find the complaint was brought in bad faith.
Since the complainant has failed to prove all the elements necessary to entitle it to relief, the complaint is dismissed.
For the panel:
(s) Alan L Limbury