United States
Office of Personnel Management v. MS Technology Inc
a/k/a Mahendra Lamba
Claim Number: FA0310000198898
PARTIES
Complainant is United States Office of Personnel Management, Washington, DC (“Complainant”)
represented by Susan G. Whitman, 1900 E Street N.W., Washington, DC 20415.
Respondent is MS Technology Inc. a/k/a Mahendra Lamba, Charlotte, NC
(“Respondent”) represented by G. Carol Brani of Womble Carlyle Sandridge & Rice, PLLC, 301 South College Street, Suite 3300, Charlotte, NC 28202-6025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <usajobs.com> registered with Network Solutions. Inc. (“NSI”) .
PANEL
Each of the undersigned certifies that he
has acted independently and impartially and, to the best of his knowledge has
no known conflict in serving as Panelist in this proceeding.
Mr. Peter L. Michaelson, Esq. as
Presiding Panelist, and Hon. Ralph Yachnin (Ret) and Mr. P.
Jay Hines, Esq. as Co‑Panelists.
PROCEDURAL
HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
The Complainant submitted a Complaint to
the National Arbitration Forum (the “Forum”) electronically on September 30,
2003; the Forum received a hard copy of the Complaint, together with Annexes 1‑25,
on October 1, 2003.
On October 3, 2003, NSI confirmed by e‑mail
to the Forum that the domain name <usajobs.com>
is registered with NSI and that the Respondent is the current registrant of the
name. NSI has verified that the Respondent is
bound by the NSI registration agreement and has thereby agreed to resolve
domain‑name disputes brought by third parties in accordance with the
Policy.
On October 6, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of October 27, 2003 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent via e‑mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@usajobs.com
by e‑mail.
A Response, together with Annexes 1‑2,
was timely received by the Forum and determined to be complete on October 27,
2003.
Pursuant to Supplemental Rule 7, the
Complainant timely filed an additional submission, together with its annex, by
facsimile with the Forum on November 3, 2003.
On November 11,
2003, pursuant to the Respondent’s request to have the dispute decided by a
three‑member
panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Presiding Panelist
and Hon. Ralph Yachnin (Ret.) and Mr. P. Jay Hines, Esq. as Co‑Panelists
and set a due date of November 25, 2003 to receive the decision from the Panel.
On November 24, 2003 and owing to
unforeseen and exceptional circumstances, the Panel extended the due date for
the decision by two weeks to December 9, 2003.
RELIEF
SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
1.
Confusing
similarity/identicality
The Complainant states that the disputed
domain name <usajobs.com>
incorporates the Complainant’s registered and common law mark “USAJOBS” in its
entirety and thus is identical to the mark.
Hence, the Complainant concludes that the
requirements of paragraph 4(a)(i) of the Policy are satisfied.
2.
Rights
and legitimate interests
The Complainant
contends that the Respondent has no rights or legitimate interests in the
disputed domain name.
First and with respect to paragraph
4(c)(i) of the Policy (lack of use of the name in connection with a bona fide
offering of services prior to receiving notice of the dispute), the Complaint
makes the following allegations.
The Respondent’s <usajobs.com> web site offersing essentially the
same services as the Complainant’s web site while displaying the Complainant’s mark, and thereforea complainant
and displaying the complainant’s mark cannot
support a finding of bona fide offering of goods or services. The Complainant The USAJOBS.com website offers essentially the same
services as OPM’s website. developed,
implemented and sponsors the official Federal job search and recruitment web
site known as “USAJOBS”, which provides employment information and application
assistance. The Respondent’s web site
similarly provides a database of Federal Government employment
information. Since the Respondent web
site offers the same services as the Complainant and displays the Complainant’s
“USAJOBS” mark, the Respondent’s use of the domain is not in connection with a
bona fide offering of goods or services.
Further, although
the Respondent’s web site purports to provide access to a forum from which
paying non‑Federal employers may view resumes, that forum provides no
access to any employment information unless an individual first submits
private, personal, identifying information and a resume, effectively
relinquishing his or her privacy rights.
Upon relinquishing those rights, third parties may access and use the
private information so entered to distribute unsolicited messages. (See Comp. Annex 14 to the Complaint at p 3 for a copy
of the Respondent’s Privacy Statement posted to its <usajobs.com> web site and specifically page 3
thereof). Hence, the
Complainant alleges that that the Respondent is using the private, personal
identifying information it gathers for those who access its site to capitalize
on those users who are attempting to reach the Complainant’s web site but reach
the Respondent’s site instead. Hence, the Complainant concludes that the
Respondent’s use of the disputed domain name in this fashion does not and
cannot constitute a legitimate or bona fide service.
Moreover, the
Complainant contends, with citation to Seymour
v. Burgar d/b/a Stephanie Seymour Club, FA 97112 (Nat. Arb. Forum Nat.
Arb. Forum May 29, 2001), that when a web site serves primarily as
a portal to promote other web sites or services, that use evidences no bona
fide authorized offering of goods and services whatsoever and does nothing but
misappropriate a complainant’s trademark in order to lure Internet users to
respondent’s commercial site. In that regard, the Complainant states that
the Respondent’s web site acts primarily as a portal to the Complainant’s
Federal employment information but with express notice that the Respondent owns
copyright rights to the data ‑‑ data that was compiled by the
Complainant and then used by the Respondent.
The Complainant notes, by pointing to third‑party e‑mail
correspondence copied in Comp. Annex 17 to the Complaint,
that the Respondent’s web site has resulted in confusion and has generated
complaints by users.
The Complainant
is well‑known as the Federal Government’s employment agency which assists
U.S. Government agencies in recruiting, examining, training and promoting
individuals in accordance with the laws imposed by Congress. In an effort to reach the general
population, the Complainant has engaged in substantial advertising of
“USAJOBS.” Copies of a small sample of
such advertisements appear in Comp. Annex 5 to the Complaint. Consequently and as evidenced by these and
other such advertisements, the Complainant’s actions have established a high‑quality,
well‑regarded web site that is recognized by the media (see Comp. Annex 6 to the
Complaint for various media articles). Hence, the Complainant contends that the Respondent attempted to
capitalize on this reputation, until immediately following the Complainant’s
objection, through which the Complainant specifically stated that it was the
Federal Government’s official “one‑stop” source for Federal jobs and
employment information. (See Comp. Annex 15 for copies
of the Respondent’s home page provided in Annex 15 to the Complaint).
The Complainant
further alleges that the Respondent’s continued use of the Complainant’s mark
for no apparent reason other than to usurp the goodwill, security and
reputation of the Federal Government for profit adversely affects the general
public’s perception and confidence in the Complainant’s ability to perform its
statutory duties and responsibilities.
The Complainant concludes, citing to Wells
Fargo & Co. v. Seventh Summit Ventures, FA 155463 (Nat. Arb. Forum Nat.
Arb. Forum, June 10, 2003) (respondent makes opportunistic use of
complainant’s mark in order to capitalize on the good will and fame associated
with the WELLS FARGO moniker), that such a use is not bona fide.
Second and with respect to paragraph
4(c)(ii) of the Policy (respondent is not commonly known by disputed domain
name nor has acquired any trademark or service mark rights in the disputed domain
name), the Complainant makes the following allegations.
The Respondent is not commonly known by
the disputed domain name. Nothing in
the <usajobs.com> WHOIS
registry information implies that the Respondent is commonly known by the
disputed domain name. To support its
view, the Complainant cites to Am.
Express Co. v. (This Domain is For Sale) Joshuathan Invs., Inc., FA 154647
(Nat. Arb. Forum Nat. Arb. Forum, June
3, 2003) where an ICANN panel found that WHOIS registration is a factor in
determining that a registrant is not commonly known by a domain name for
purposes of paragraph 4(c)(ii)).
Furthermore, the Complainant avers that the disputed domain name does
not indicate to the public, whether by initials, acronym, trade‑name or
otherwise, the Respondent’s business. In
addition, the Respondent has not acquired any trademark or service mark rights
in the disputed domain name. Moreover,
the Complainant states that the Respondent’s use of that name or the
Complainant’s mark “USAJOBS” is unauthorized.
Neither the Respondent nor any component of the Respondent’s company has
applied for a license or permission from the Complainant to use the mark
“USAJOBS”.
Lastly and with
respect to paragraph 4(c)(iii) of the Policy (legitimate non‑commercial or fair use
of the domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the mark at issue), the Complainant alleges as follows.
The Respondent’s use of the domain name
is neither legitimate nor fair. In that
regard, the Complainant states that under the “fair use” doctrine, use of words
for descriptive purposes is permitted even if the words themselves also
constitute a trademark. See, New Kids on the Block v. News Am. Pub., Inc.,
971 F.2d 302, 307 (9th Cir. 1992). However,
the narrow fair use exception allows usage of a trademark as a domain name
“only when a non‑trademark use is made, that does not depend for its
value on the existence of the trademark.” United
States Dep’t of the Navy NAVSEA v. NAVYWEB, FA 105977 (Nat. Arb. Forum Nat. Arb. Forum May
21, 2002).
The Complainant alleges that use of <usajobs.com> is not merely
descriptive; rather, it depends for its value on the existence of the
Complainant’s mark “USAJOBS”. Internet
users seeking the Complainant’s web site accessible at <usajobs.opm.gov>
are likely to enter <usajobs.com>
into their browser simply because the latter domain name is formed of the
Complainant’s “USAJOBS” mark followed by the most common URL suffix “.com.” See Sporty's Farm L.L.C. v. Sportsman's
Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000), cert. denied,
530 U.S. 1262 (2000) (“For consumers to buy things or gather information on the
Internet, they need an easy way to find particular companies or brand
names. The most common method of locating
an unknown domain name is simply to type in the company name or logo with the
suffix .com”).
Furthermore, the Complainant alleges that
the Respondent’s use of <usajobs.com>
is not a “legitimate noncommercial” use.
In that regard, the Complainant states that the Respondent generates
revenue from the web site. (See Comp. Annex 20 for a copy
of a letter dated July 10, 2003
from the Respondent’s Counsel to the Complainant’s Counsel, a copy of which appears
in Annex 20 the Complaint, which states in pertinent part “My
client is currently producing revenue from the web site USAJOBS.COM.”) .
An unauthorized use of a trademark in a
domain name to sell products branded under that trademark is not a legitimate
interest, citing to Gillette Co. v.
Haynes, FA 155904 (Nat. Arb. Forum Nat.
Arb. Forum, June 4, 2003) (finding that use of the trademark
domain name does not represent a legitimate noncommercial or fair use because
respondent is using the domain name to sell complainant’s goods without
authorization.). Furthermore, the use
of a domain name to confuse and divert Internet traffic is also not a
legitimate use of that domain name, citing to Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Nat. Arb. Forum Feb.
27, 2001); see also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001‑0252 (WIPO WIPO Apr. 9,
2001) (finding no rights or legitimate interests where respondent generated
commercial gain by intentionally and misleadingly diverting users away from
complainant's site to a competing web site).
The Complainant
further contends that prior to voicing its objection over use of the disputed
domain name to the Respondent, the Respondent, through use of the
name, exhibited an intent to pass itself off to interested persons as the
official web site of the Complainant, and to reverse pass off the Complainant’s
employment information services as that of the Respondent despite the fact that
the Respondent is in no way affiliated with or authorized by the Complainant to
use the Complainant’s mark or the Complainant’s information. Even after the Respondent eliminated its
express claim that its web site was the official site of the Complainant, the
services which the Respondent then offered through its site continue to be, in
fact, the Complainant’s own job information services, misleadingly identified
as being subject to copyright by the Respondent. Hence, the Complainant concludes that the passing off of the
Complainant’s services as being offered by the Respondent, through its <usajobs.com> web site is not
legitimate or fair, citing to Toronto‑Dominion
Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (because respondent's sole purpose in
selecting the domain names was to cause confusion with complainant's web site
and marks, its use of the names was not legitimate or fair use).
Moreover, the Complainant opines that
even if the Respondent’s web site offered legitimate services, such as an
employment information forum separate and apart from the Federal employment
information, nonetheless the Respondent’s use of the disputed domain name for
commercial gain by misleadingly diverting consumers, who seek to reach the
Complainant’s site through use of its mark “USAJOBS”, away from the
Complainant’s site and to the Respondent’s site is neither a legitimate
noncommercial nor a fair use of the mark.
3.
Bad
faith use and registration
The Complainant
contends that the Respondent has registered and is using the disputed domain
name in bad faith in violation of the Policy.
First and with respect to paragraph
4(b)(iii) of the Policy (registration of the disputed domain name primarily to
disrupt the business of a competitor), the Complaint alleges as follows.
The Complainant contends that, through
the Respondent’s <usajobs.com>
web site, the Respondent disrupts the Complainant’s ability to accomplish its
Congressionally mandated mission by diverting traffic intended for the official
“USAJOBS” site. Bad faith intent to
divert traffic has been presumed in cases where a respondent and a complainant
were in the same line of business in the same market area, citing to Lubbock Radio Paging v. Venture Tele‑Messaging,
FA 96102 (Nat. Arb. Forum Nat.
Arb. Forum Dec. 23, 2000).
Diversion of traffic can be in bad faith even where, as here, the
Complainant’s use of its mark is not‑for‑profit, with reference to United States of Am. Dep’t of the Navy
NAVSEA v. NAVYWEB, FA 105977 (Nat. Arb. Forum Nat. Arb. Forum May 21, 2002) (Neither trademark law nor ICANN
Policy or Rules require a use to be for‑profit to be protected).
Furthermore, the Complainant contends
that the Respondent uses the disputed domain name to offer the same business
that the Complainant offers through its official <usajobs.opm.gov> web
site. Because the business the
Respondent offers through the disputed domain name confusingly overlaps with
the service the Complainant offers, Internet users are likely to conclude that
the disputed domain name was endorsed by the Complainant, when it is not. As a result, the Respondent’s use of that
name interferes with the Complainant’s mission, as dictated by Congress, by
diverting traffic otherwise intended for the Complainant’s official site.
Second and with respect to paragraph
4(b)(iv) of the Policy (use of the disputed domain name to intentionally
attract, for commercial gain, Internet users by creating a likelihood of
confusion with the complainant’s mark), the Complaint alleges as follows.
“Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.” Entrepreneur Media, Inc. v.
Smith, 279 F.3d 1135, 1148 (9th Cir. 2002); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Nat. Arb. Forum Dec.
18, 2000). In that regard, the
Complainant contends that the Respondent registered the disputed domain name in
order to intentionally confuse Internet users seeking federal job information
services and, in so doing, caused confusion (see Comp. Annexes 17 and 18 to the Complaint ‑‑
the latter being a copy of the results of a Google™ search dated July 15, 2003
that show other official sites linking through to the Respondent’s site,
ostensibly, as the Complainant infers, thinking their sites were linking to the
Complainant’s site instead).
At the time the Respondent registered the
disputed domain name, the Complainant’s <usajobs.opm.gov>
site
was successfully servicing millions of individuals seeking Federal employment
information. As the Respondent’s web
site operates in the same field or industry as the Complainant’s site, the
Respondent must have been actually or constructively aware of the existence of
the <usajobs.opm.gov> web site, and
must reasonably have known of the Complainant’s prior use of its <usajobs.opm.gov> site and its
“USAJOBS” mark. In that regard, the
Complainant cites to Charles Jourdan
Holding AG v. AAIM, D2000‑0403 (WIPO WIPO June
27, 2000) (finding that a domain name so obviously connected with the
Complainant and its products that its very use by someone with no connection
with the Complainant suggests opportunistic bad faith) and Digi Int’l Inc. v. DDI Syss., FA 124506 (Nat. Arb. Forum Nat. Arb. Forum Oct. 24, 2002)
(finding a legal presumption of bad faith when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively).
Further, the Complainant contends that
the Respondent’s actions evidence a bad faith attempt to confuse users. Factors which have been found to indicate
bad faith include: (i) use of a complainant’s logo; (ii) framing of a
complainant’s content; (iii) giving a description of services that are
consistent with a complainant’s activities but not the respondent’s activities;
and (iv) advertising the respondent’s services. British Broadcasting Corp.
v. Renteria, D2000‑0050 (WIPO WIPO Mar.
23, 2000). While a disclaimer on a web
site may prevent user confusion as to sponsorship, the lack of such a
disclaimer is further evidence of bad faith.
See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Nat. Arb. Forum
Aug. 23, 2001).
With reference to the present dispute, Tthe Respondent’s
web site here: (i) uses the Complainant’s “USAJOBS” mark and seamlessly links
to the Complainant’s web site and its logo; (ii) appropriates and displays the
Complainant’s content; (iii) gives a description of services that are consistent
with the Complainant’s services but are not the Respondent’s services; and (iv)
includes advertising. Moreover, the
Complainant states that the Respondent’s site does not display any disclaimer
to the effect that its web site is not affiliated with the Federal government.
B.
Respondent
1.
Threshold Issues
a. Laches
The Respondent contends that
the Complainant made no effort to protect its trademark rights prior to January
of 2003. Specifically, the Respondent
states that the Complainant admitted that it has been aware of Respondent’s web
site since at least 1999 (as indicated on page 4 of the Complaint). Yet not until January 2003 did the
Complainant obtain a federal trademark registration for the term “USAJOBS”. The Respondent further states that, by
the Complainant’s own admission, the Complainant delayed almost four years from
the time the Respondent’s <usajobs.com>
web site became active before contacting the Respondent on or around July 2,
2003 and asserting that the Respondent’s conduct infringed Complainant’s
trademark rights.
b. Invalidity of the Complainant’s mark and inappropriate forum
The Respondent contends that
Complainant’s trademark “USAJOBS” is invalid and
should not have received federal registration because “USAJOBS” is a
descriptive term and is not distinctive.
Given this, the Respondent views the nature of the present dispute to be
a trademark infringement dispute which is more appropriate to the courts than
to an ICANN panel operating under the Policy, and moreover believes that the
Complainant cannot satisfy the three elements necessary to prevail under the
Policy.
2.
Policy
Elements
a.
Confusing similarity/identicality
Here, the Respondent contends that the
disputed domain name is neither identical nor confusingly similar to a mark in
which the Complainant has any rights.
In essence, the Respondent
alleges that the Complainant’s mark is a descriptive term that is neither
distinctive nor has any secondary meaning; hence the Complainant has no valid
rights in its mark sufficient to invoke paragraph 4(a)(i) of the Policy.
Furthermore and alternatively,
the Respondent alleges that the disputed domain name, <usajobs.com>, is not “confusingly similar” to Complainant’s
mark. Specifically, the Respondent states , that practically
speaking, “the vast majority of Internet job seekers are well aware that
official government web sites have a dot‑gov extension and, conversely,
that government web sites do not have a dot‑com extension” (see Resp. Annex 2 for a copy
of Affidavit of Mr. Mahendra Lamba, President of Respondent
corporation -- a copy of which appears in Annex 2 to the
Response and henceforth the “Lamba affidavit”). Hence,
the Respondent opines that job‑seeking Internet users know that they do
not access an official government web site whenever they enter a dot‑com
Internet address. Moreover, the Respondent points to the
fact that the a job seeker running a GoogleTM search for “USAJOBS”,
would obtain results, as the Complainant did, in which the Complainant’s official
web site is listed as a first entry. Given that the Respondent states that “It is reasonable to assume
that most users utilizing the world’s predominant search engine will select its
first result.” Hence, the Respondent concludes that
the Complainant has failed to prove that the disputed domain name is either
identical or confusingly similar to an enforceable mark in which the
Complainant has any rights.
b.
Rights
and legitimate interests
The Respondent contends that it has
legitimate rights and interests in the disputed domain name under paragraph
4(c)(i) or (ii) of the Policy.
With respect to the paragraph
4(c)(i) (demonstrable preparations to use the name, in connection with a bona
fide offering of goods or services, the name prior to notice of the dispute),
the Respondent states that, for four years prior to any notice of a dispute
with the Complainant, it used <usajobs.com>
in connection with a bona fide offering of employment and recruitment
services. Specifically, the Respondent
contends that the Complainant’s annexed version of the Respondent’s <usajobs.com> web site shows that the
Respondent, through that site, offers bona fide employment and recruiting
services.
Regarding paragraph 4(c)(ii)
(commonly known by the domain name regardless of not having acquired any
trademark or service mark rights), the Respondent contends that it has
diligently worked to develop repeat and referral business resulting in good
will associated with the domain name in dispute. Specifically, the Respondent states, in
paragraph 8 of the Lamba affidavit:
“That, since 1999, my company
has invested substantial resources in developing its reputation and goodwill
associated with the domain name ‘USAJOBS.com’.
Although I have resided in the United States for a few decades, I have
countless contacts, as well as several business interests in India. Because of my Indian contacts and business
interests, and since both goodwill and reputation travel across international
borders, my company’s services are commonly known by the domain name,
USAJOBS.com. Moreover, my company’s
value is significantly greater than the fee for registering a domain name.”
Ultimately, the Respondent
disputes that the Complainant’s rights in its trademark have priority over the
Respondent’s rights.
The Respondent takes the position
that the Complainant’s trademark should not have received federal registration
inasmuch as the term “USAJOBS” is a common descriptive name with substantial
third party use. The Respondent
contends that that name is neither an invented mark nor is it an inherently
distinctive word; it has no secondary meaning. Hence,
the Respondent concludes that it has rights and legitimate interests in the
disputed domain name because it has invested four years of effort into developing
a successful business trading at the <usajobs.com>
address.
c.
Bad faith
The Respondent contends that it did not
register and use the disputed domain name in bad faith.
Specifically,
the Respondent states, with references (though here omitted for simplicity)
made to the Lamba affidavit, as follows.
The
Respondent is a privately‑held corporation involved in an array of
legitimate businesses. Respondent Lamba
has a vast network of connections in the tech‑savvy Indian community here
and abroad. In 1997, Respondent Lamba’s awareness of
foreign nationals’ interest in obtaining employment in the United States
prompted him to purchase the disputed domain name in order to implement his
business model: the promotion of federal and private sector employment
opportunities in the United States. Respondent
Lamba focused on other business interests between 1997 and 1999; however, since
late 1999, Respondent has operated a bona fide employment and recruitment
service targeted toward, but not limited to, the international community. Since that time, and consistent with
Respondent Lamba’s legitimate business model, USAJOBS.com has developed
substantial goodwill, generating repeat and referral business. At least one panel has described the “bad faith
registration” element as follows.
The Respondent, citing to Rusconi Editore v. Bestinfo, D2001‑0656 (WIPO WIPO July
5, 2001) and Ode v. Intership Ltd., D2001‑0074
(WIPO WIPO May 1, 2001), contends that for
an allegation of bad faith registration and use of a domain name to succeed,
the Complainant must show at the very least that when the Respondent registered
the name, the Respondent was (or was likely to have been) aware of the
existence of the Complainant or, more particularly, the Complainant’s rights in
respect of the trade mark in question.
Given this,
the Respondent states that, in order to develop its employment and recruiting
services business, it registered a descriptive domain name that fit his
business model to attract foreign job seekers seeking employment in the U.S.
and to connect them with jobs available in the U.S. The
Respondent acknowledges that, at the time it purchased the disputed domain
name, it was aware that the Complainant offered information regarding federal
government jobs at an official government web site: <usajobs.opm.gov>.
Nonetheless, prior to registering the <usajobs.com>
web site in 1997, the Respondent
researched
and verified to itself that there was no federal trademark registration that
might impinge on the value of the domain name now in dispute.
The
Respondent contends that it defies common sense for the Complainant to assert
that the Respondent registered <usajobs.com>
in bad faith when the Complainant has provided not one iota of evidence that it
had any relevant trademark rights at the time the Respondent registered that
name. Hence, the Complainant failed to show
bad faith registration.
Furthermore,
the Respondent contends that it has not used the disputed domain name in bad
faith. To that end, the Respondent states that
it has never offered to sell the disputed domain name nor is that name
currently for sale.
Also, the
Respondent stated that it intended to establish its employment and recruitment
site immediately following registration, but other business concerns delayed
its doing so. Nonetheless, delay alone
does not support a finding of bad faith use. As
soon as Respondent Lamba’s other business interests permitted, he established
the <usajobs.com> site
consistent with his goals at the time of registration. In that regard, Respondent Lamba contends that he is not required
to immediately take his web site live in order to support a contention of good
faith. Respondent Lamba acted consistently
with his business goals, did not ever try to sell his registration and worked
hard to build a business associated with <usajobs.com>. His
business was not about diverting Internet users from the Complainant’s official
government site. It was about capitalizing on a descriptive
term, i.e., “USAJOBS”, logically where a job seeker might expect to find
information regarding employment in the United States. The Complainant’s mark was and is neither
strong or famous. Hence, the Respondent concludes that the
Complainant has failed to show bad faith use.
C.
Complainant’s Additional Submission
Through its additional submission, which
the Panel has fully considered, the Complainant rebuts various contentions set
forth in the Response.
1. Threshold Issues
a. Laches
First, the Complainant states that,
contrary to the Respondent’s view, the Complainant did not wait until 2003 to
seek its trademark registration. Rather
the Complainant filed its federal trademark application in February 1999 and
vigorously prosecuted the application until the Complainant successfully
obtained its registration in January 2003.
(See Comp. Annex
9
to the Complaint). Furthermore, the Complainant
states that the date of its trademark registration is irrelevant, inasmuch as
its mark “USAJOBS” was well‑known and distinctive and has been used in
commerce since 1996 ‑‑ which is prior to the date on which
Respondent registered the disputed domain name.
As to
laches, the Complainant notes that ICANN panels have rejected the use of laches
under the Policy as long as the three elements of the Policy are met, citing to
E.W.
Scripps Co. v. Sinologic Indus., D2003‑0447 (WIPO WIPO July
1, 2003) (“If the requirements of a valid complaint under the Policy are
established, the Policy does not provide any defense of laches.”).
Furthermore, the Complainant notes that the laches defense was
analyzed and rejected in Hebrew Univ. of Jerusalem v. Alberta Hot Rods,
D2002‑0616 (WIPO WIPO Oct. 7, 2002). There, the Panel indicated that laches is an
equitable remedy which requires: (1) “unreasonable” delay in the commencement
of proceedings, and (2) that delay must render the grant of relief unjust. In Hebrew
University, the panel found that a complaint brought pursuant to the Policy
gives rise to a contractual, not an equitable, remedy. Hence, the issue to be determined is whether
the grounds set out in the Policy for transfer or cancellation have been
established. There is no limitation period in the
Policy; hence, the defense of laches has no application.
Furthermore,
even if laches were available to the Respondent, the facts necessary for such a
finding are not present in this matter.
In Miller Brewing Co. v. Miller
Family, FA 104177 (Nat. Arb. Forum Nat.
Arb. Forum Apr. 15, 2002), a domain name was transferred although
the complaint was brought five years after the complainant actually became
aware of the disputed domain name. The
delay in filing the complaint was not unreasonable, because the respondent
there had substantially changed its site during that period to make it more
objectionable.
Similarly,
in the present matter, although the Complainant became aware of the disputed
domain name registration in 1999, as noted in the Complaint, the web site was
merely a “placeholder” at the time. It
was not until recently that the Complainant became aware that the Respondent
had begun framing the Complainant’s site, making explicit claims to be the
official USAJOBS web site, and otherwise trying to divert traffic from the
official site. These actions, which were
brought to the Complainant’s attention by members of the public who were
actually confused by the Respondent’s site, led to the Complainant’s decision
to file the Complaint.
b. Invalidity of Complainant’s mark
Further,
while the Respondent attacks the Complainant’s trademark as invalid, it has
provided no factual evidence that would support its allegation that the mark is
not distinctive. A Federally registered
trademark is presumed to be valid in a UDRP proceeding. See LTD Commodities Inc. v. Costnet, D2002‑0031 (WIPO WIPO May 2,
2002); see also Amazon.com, Inc.
v. Rayaneh Net, Nat.
Arb. Forum FA 196217 (Nat. Arb. Forum Oct. 28,
2003) (registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive;
respondent has the burden of refuting this assumption.). The Respondent has done nothing to rebut
this presumption. Whether or not the Complainant’s
trademark was appropriately granted by the USPTO is therefore not at issue in
this proceeding. At issue is the fact
that the Complaint has shown that the Respondent’s registration and use of the
disputed domain name <usajobs.com>
satisfies all three of the elements necessary for the Complainant to prevail
under the Policy.
The
Respondent asserts that “the vast majority” of Internet job seekers are aware
that Government web sites have a .gov rather than a .com extension. The Respondent’s sole support is the Lamba
affidavit, which does not constitute evidence regarding the vast majority of
any population but rather speaks of Respondent Lamba’s own personal
experience. The Complainant disputes
the Respondent’s unfounded assumption that the public at large is sufficiently
sophisticated in Internet usage ostensibly, as understood by the Panel, to such
a point that a difference in the gTLD will ameliorate any likely user
confusion. The Complainant points to Comp. Annex 17 of the
Complaint which shows that confusion among members of the public
has actually occurred among reasonably prudent Internet users.
2. Policy Elements
a. Identicality/confusing similarity
Additionally,
the Complainant points out that the Policy requires that the disputed domain
name be identical or confusingly similar to the registered mark. Hence, the Respondent’s arguments regarding
consumer confusion are irrelevant because the disputed domain name is identical
to the Complainant’s registered mark “USAJOBS” mark. Therefore, Complainant has satisfied the first element of the
Policy.
b. Rights and legitimate interests
Regarding
the Respondent’s assertion that it has rights in <usajobs.com> because it engaged in a bona fide service since
1999 and prior to notice of the present dispute, the Complainant states that
the Respondent is ignoring its actions of framing and deep linking, together
with incorporation of the <usajobs.opm.gov> logo,
expressly and falsely asserting at the bottom of the <usajobs.com> web site that: “This is a United States Office of
Personnel Management web site. USAJOBS
is the Federal Government’s official one‑stop source for Federal jobs and
employment information.” See Complaint
at page 4; and Comp.
Annex 15 (hard copy printout of frame at bottom of page 2; and which in
general provides a hard‑copy of a download of the Respondent’s site as
that site existed in June 2003.).
These are hardly the characteristics of a bona fide service – rather,
they show that the Respondent was attempting to capitalize on the goodwill
associated with the Complainant’s “USAJOBS”
mark for the Respondent’s own financial gain.
Alternatively,
the Respondent contends that it has been commonly known by the disputed domain
name <usajobs.com>, and
therefore it has legitimate rights and interests in the domain name. The Respondent bases this argument on
Respondent Lamba’s statements, in his affidavit, through which he claims that
“substantial resources” have been invested in popularizing <usajobs.com> in India, and as a
result the web site is commonly known as <usajobs.com> in that country.
The Complainant asserts that paragraph 4(c)(ii) of the Policy states
that rights or legitimate interests may be established by showing that: “you
(as an individual, business, or other organization) have been commonly known by
the domain name…”. Given this, the
Complainant contends that neither the individual (Respondent Lamba) or the business
(Respondent MS Technology, Inc.) involved here are known as “USAJOBS.com”. The Respondent’s argument is that its
service (i.e., its web site at <usajobs.com>)
is commonly known as “USAJOBS.com”; however, this knowledge of the site itself ‑‑
which obviously applies for all cases under the Policy involving disputed
domain names ‑‑ does not suffice under paragraph 4(c)(ii).
c. Bad faith
With respect to
the Respondent’s bad faith registration of the disputed domain name, Respondent
Lamba expressly admits (see
paragraph 4 of the Lamba affidavit) that he was aware, prior to registering
that name, that “an agency of the United States government maintained and
managed a web site with a dot opm dot‑gov extension” and that he searched
federally registered trademarks prior to registration and did not find a
registration or pending registration for the “USAJOBS”
mark. The Complainant states that it is
a fundamental principle of trademark law that it is not necessary to have a
federal registration to have rights in a mark.
Moreover, the
Complainant states that the Respondent does not contest that the Complainant
used the mark “USAJOBS”
first, and indeed expressly admits actual knowledge of the Complainant’s use of
the mark. As a result, the Complainant
states that it maintains common law rights as of both the date of the
Respondent’s registration (1997) of the disputed domain name and its first use
of that name (1999). Respondent Lamba’s
admitted awareness of the <usajobs.opm.gov> site prior to
his domain registration is evidence that the
mark “USAJOBS” had become distinctive and achieved
secondary meaning at the time that the Respondent registered the name. The Complainant further states that beyond
Respondent Lamba’s admitted awareness of the <usajobs.opm.gov> site, it has also provided ample
evidence of the distinctiveness of the mark and web site “USAJOBS”,
including publicity of the site’s rollout in 1996 (Comp. Annex 2 to the
Complaint), the numbers of OPM webpage visits (Comp.laint
Annex 3), marketing pieces (Comp. Annex 5 to the Complaint),
and unsolicited media reports (Comp. Annex 6 to the Complaint). Therefore, the Complainant contends that the
Respondent’s registration of the name while it admittedly knew of the existence
of the Complainant’s distinctive trademark is proof of the Respondent’s bad
faith registration.
As to the
Respondent’s bad faith use, the Complainant first points to the original format
of the web site which blatantly claimed to be the official United States Office
of Personnel Management web site and implemented confusing and unfair framing
and linking to <usajobs.opm.gov>. These undisputed facts clearly show that the
Respondent was trying to confuse or divert Internet traffic seeking the
Complainant’s official site. The Complainant also states that
the Respondent’s site displays a variety of marketing advertisements,
presumably generating a profit for the Respondent. Moreover, the Respondent’s site collects personally identifying
information, which the Respondent plainly states may be collected and used by
others, and which may result in unsolicited messages from third parties. (See Comp. page 3 of Annex
14 to
the Complaintat p 3.)
The Complainant
strongly disputes the Respondent’s contention that the Respondent’s site at
<usajobs.com> provides
legitimate services for foreign nationals seeking Federal jobs, i.e., merely
implementing a business model of promoting to foreign nationals Federal and
private sector employment opportunities in the United States. Specifically, the Complainant states that it
would make no sense to advertise Federal job openings to foreign nationals,
Indian or otherwise. Almost without
exception, Federal employment is limited to United States citizens. See, generally, Executive Order 11935, President Gerald Ford, 41 Fed. Reg. 37301,
September 3, 1976. The Complainant
posts content on citizenship requirements available within USAJOBS. See http://www.usajobs.opm.gov/ei9.asp. The <usajobs.opm.gov> web site
offers job searching in overseas locations because the United States government
employs people all over the world.
However, the USAJOBS web
site for the most part does not seek applications from foreign
nationals. Even when a few jobs are
open to non‑citizens, they are typically not posted on the <usajobs.opm.gov> database
because agencies recruiting for these jobs are not interested in publicizing
them beyond the local geographic area.
By simply framing and linking to the Complainant’s entire database, the
scope of the Respondent’s web site is too broad to support any potentially
legitimate focus on providing information regarding a limited number of Federal
job opportunities for foreign nationals.
Lastly,
the Complainant disputes the Respondent’s argument that that latter uses the
name <usajobs.com> because the
term describes its services, i.e., jobs in the United States for
foreign nationals. The Complainant
states that while the Respondent’s <usajobs.com>
site does provide listings of jobs in the United States, it also contains
listings in various other countries, including Canada, the United Kingdom and
India. See, Comp. Add. Sub. Annex 26 in the Complainant’s (providing
a sample of six job listings in various countries obtained from <usajobs.com>). The Respondent’s supposed good faith reason
for using the name <usajobs.com>
– that it accurately describes the Respondent’s services – simply does not hold
up to scrutiny. Rather, the only
conceivable reason the Respondent could be using <usajobs.com> is to profit from the goodwill associated with the
Complainant’s web site, which clearly constitutes bad faith use.
FINDINGS
A copy of the
InterNIC and NSI WHOIS registration records for the disputed domain name appear
in Comp. Annexes
10 and 11, respectively, to the Complaint. These records collectively indicate that the
Respondent registered the <usajobs.com>
domain name on November 7, 1997 with NSI.
The Respondent has since renewed its registration, with NSI, on October
18, 2002.
A. The Complainant’s “USAJOBS” mark
The Complainant owns a federal service
mark registration for the term “USAJOBS” and has provided, in Comp. Annex 9 to the
Complaint, a copy of the federal registration, as issued by the
United States Patent and Trademark Office (“USPTO”), for that mark. The pertinent details are as follows:
USAJOBS
(block letter)
US
registration 2,675,991; registered January 21, 2003
This mark was registered for use in
connection with: "providing worldwide United States Federal job vacancy
announcements and information, Federal employment fact sheets, and Federal job
applications and forms via a global computer network” in international
class 35. This mark claims a first
use and first use in commerce date of September 30, 1996. The mark was registered based on acquired
distinctiveness under Lanham Act §2(f).
B. The Parties’ Activities
The Complainant, the United States Office
of Personnel Management (“OPM”), is a Federal executive agency vested by
Congress with authority to ensure compliance with personnel laws and
regulations that govern Federal employees.
5 U.S.C. § 1101 et seq. The Complainant assists US Government
agencies in recruiting, examining, training and promoting people on the basis
of their knowledge and skills, regardless of their race, religion, sex,
political influence or other non‑merit factors. Further, OPM provides guidance to agencies in operating human
resources programs which effectively support their missions and provides an
array of personnel services to applicants and employees.
In furtherance of its statutory mission,
the OPM Human Resources Products & Services Division, Center for Talent
Services, has developed, implemented and hosts a Federal job search and
recruitment Internet web site known as “USAJOBS”. USAJOBS is the Federal Government’s official one‑stop
source for Federal jobs and employment information. Official vacancy announcements and other recruitment tools are
available to the public without cost.
USAJOBS is located on an Internet web site at <www.usajobs.opm.gov>.
The <usajobs.opm.gov> web site was
officially announced by a news release dated September 13,
1996, and was unveiled on September 16, 1996 (see copy of OPM News Release
provided in Comp. Annex
2
to the Complainant). During the last three months of 1996, the <usajobs.opm.gov> web site
received approximately 22,000 visits from individually identifiable IP
addresses (with all visitors behind a single fire wall counting as a single
visitor), performed approximately 70,000 searches and pulled over a hundred
thousand files (or “hits”) or search results.
During 1997, the volume of use increased to approximately 3.8 million
visitors performing approximately 11 million searches of Federal job data and
resulting in approximately 149 million hits.
By the end of 1999, approximately 13 million visitors performed over 43
million searches resulting in approximately 653 million hits. As of 2002, a newly added e‑mail
feature resulted in over 18 million e‑mails of employment information and
in addition, approximately 10 million visitors performing in excess of 113
million searches, resulting in over one billion hits (see Comp. Annex 3). A
current Google™ search (a hard‑copy printout appearing in Comp. Annex 4)
yields <usajobs.opm.gov> as the first
hit.
The Complainant’s world‑wide
Federal employment information program has been a multi‑-million
dollar program since it was initiated.
Funding sources include appropriations
from Congress and annual fees assessed from every competitive service agency in
the Executive Branch of the United States Government. The “USAJOBS” program distributes advertising publications and
thousands of pieces of outreach materials (copies of samples of which appear in
Comp. Annex 5) each year to diversity organizations, colleges and universities,
and other special interest groups.
USAJOBS supports multiple career fairs for college and university career
services offices, Congressional offices, and other organizations supporting
promotion of Federal employment.
Organizations including colleges and universities, diversity‑related
organizations, and local and state governments have links to USAJOBS on their
web sites. USAJOBS has been the subject
of a variety of unsolicited media