Bold Limited v. Toni Georgiev / Outsourcing International Ltd
Claim Number: FA1709001749693
Complainant is Bold Limited (“Complainant”), represented by Lara Holzman of Alston & Bird LLP, New York, USA. Respondent is Toni Georgiev / Outsourcing International Ltd (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myresumenow.com>, registered with Dondominio (Scip); Soluciones Corporativas IP, SL.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister, Panelist
Michael A. Albert, Panelist
Diane Thilly Cabell, Panelist
Complainant submitted a Complaint to the Forum electronically on September 19, 2017; the Forum received payment on September 19, 2017.
On September 22, 2017, Dondominio (Scip); Soluciones Corporativas IP, SL confirmed by e-mail to the Forum that the <myresumenow.com>domain name is registered with Dondominio (Scip); Soluciones Corporativas IP, SL and that Respondent is the current registrant of the name. Dondominio (Scip); Soluciones Corporativas IP, SL has verified that Respondent is bound by the Dondominio (Scip); Soluciones Corporativas IP, SL registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on September 26, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 20, 2017.
On October 27, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister, Michael A. Albert, and Diane Thilly Cabell as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant registered the RESUME-NOW mark (Reg. No. 4,687,640) on February 17, 2015, and the MY PERFECT RESUME mark (Reg. No. 4,780,241) on July 28, 2015 with the United States Patent and Trademark Office (“USPTO”). Complainant also has rights to the MY PERFECT CV mark. Respondent registered its <myresumenow.com> domain name (the “Domain Name”) on January 9, 2017. The Domain Name is confusingly similar as it combines Complainant’s marks into one and appends the “.com” generic top-level domain (“gTLD”) suffix.
Respondent lacks rights and legitimate interests in the Domain Name. Respondent is not commonly known by that name. Respondent has no connection or affiliation with Complainant, nor has Complainant authorized Respondent to use the RESUME-NOW, the MY PERFECT RESUME, or the MY PERFECT CV marks. Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because a use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.
Respondent registered and uses the Domain Name in bad faith in that it intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s website by creating a likelihood of confusion between Respondent and Complainant. It maintains a website in the same area of trade as Complainant without any attempt to distinguish itself from Complainant.
The Domain Name is not identical or confusingly similar to Complainant’s marks, as MY PERFECT RESUME and MY PERFECT CV are wholly different than the Domain Name. RESUME-NOW is highly descriptive, and the trademark contains a hyphen while the Domain Name does not. When a trademark contains or is composed of highly descriptive words, even a very small difference between the trademark and the domain name is sufficient to avoid a finding of confusing similarity.
Respondent has rights and legitimate interests in the Domain Name. It hosts a legitimate business from the Domain Name that is consistent with the generic meaning of its component terms. Respondent chose to register the Domain Name because of its inherently descriptive value, with no intent to take advantage of Complainant’s rights in the words. This coupled with the fact that Respondent acquired it at a Sedo auction is sufficient to confer rights and legitimate interests in the Domain Name upon Respondent.
Many resume building firms use terms identical or very similar to Complainant’s marks and the Domain Name. Examples include <myresume.com> and <editmyresumenow>. The USPTO shows a number of trademarks comprised of similar terms, e.g., WATCH MY RESUME, MY PERFECT RESUME, CHECK MY RESUME, MY IVY RESUME, etc. The fact that Respondent’s Domain Name incorporates the three words “my,” “resume” and “now” is no evidence that it targeted Complainant or is using the Domain Name other than in connection with a bona fide offering of goods and services.
Respondent registered the Domain Name not in bad faith, but simply because it incorporated generic industry terms that became available when its prior owner offered it for sale at auction. There is no evidence that Respondent intended to profit from Complainant’s mark. Respondent had no knowledge of Complainant or its marks when it acquired the Domain Name. Given the tremendous third-party use of the words “my” and “resume” in the online resume market, there is no basis for a finding that Respondent registered or is using the Domain Name in an attempt to divert Internet traffic intended for Complainant to its own web site.
PRELIMINARY ISSUE: Language of the Proceeding
The Registration Agreement is written in Spanish. Under Rule 11(a), the language of the proceedings is the language of that agreement, subject to the authority of the Panel to determine otherwise, having due regard for the circumstances of the case.
In this case, Complainant alleges that Respondent is conversant and proficient in English, and that the proceeding should therefore be conducted in English. In support, Complainant notes that the advertisements placed on the resolving website are exclusively in English, and one of the contact addresses for Respondent’s business is in the United States. See, Complaint, Attached Exhibits 1, 2, and 12. Complainant further alleges that a recorded message at the telephone number listed in the WhoIs for Respondent is in English and states that the website is America’s number 1 online resume company. See, Complaint, page 1. Respondent has submitted its Response in English. The Panel has discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
The Panel finds that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, and pursuant to UDRP Rule 11(a), the Panel decides that the proceeding will proceed in the English language.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the RESUME-NOW and MY PERFECT RESUME marks based upon its registration of them with the USPTO (RESUME-NOW, Reg. No. 4,687,640, registered February 17, 2015; MY PERFECT RESUME, Reg. No. 4,780,241, registered July 28, 2015). See, Complaint Exhibit 4. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the RESUME-NOW and MY PERFECT RESUME marks. Complainant has not registered the MY PERFECT CV mark with the USPTO. It says it has used that mark in commerce along with the other two, but has not submitted sufficient evidence of that use to enable the Panel to determine the extent of its rights with respect to it. The Panel finds that Complainant has failed to prove its rights to the mark MY PERFECT CV.
Respondent’s <myresumenow.com> combines elements of Complainant’s marks and appends the “.com” gTLD at the end. Combining a complainant’s marks does not remove a domain name from the realm of confusing similarity per Policy ¶ 4(a)(i). Further, the addition of a gTLD is insufficient to defeat a test for confusing similarity per Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent argues forcefully that because the Complainant’s marks are highly descriptive, and because the Domain Name does not copy or mimic them exactly but contains differences, e.g., no hyphen between “resume” and “now,” and the addition of “my” to the RESUME-NOW mark, the Domain Name should not be deemed confusingly similar to Complainant’s marks. Respondent further argues that the online resume market is a crowded field, with many third-party entities using similar descriptive, generic domain or trade names (e.g., myresume.com, editmyresumenow.com), and that in cases where the domain names are comprised of highy descriptive terms the consuming public is aware that small differences in a domain name matter. Those small differences, says Respondent, are sufficient to avoid a finding of confusing similarity. The Panel is not persuaded. The WIPO Overview on Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), ¶1.7, states in relevant part as follows:
It is well accepted that the first element functions primarily as a standing requirement. . . . This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. . . .
Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, . . . .
Respondent cites respected authority in support of its argument about small differences being important, and the Panel has given that line of reasoning due consideration. On balance, however, the Panel believes that the test articulated by the WIPO Overview cited above is the better approach. The operative words from Complainant’s marks RESUME-NOW and MY PERFECT RESUME are clearly recognizable within the Domain Name, and on this basis it concludes that Complainant has met its burden of proof with respect to the first element of its case.
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the RESUME-NOW and MY PERFECT RESUME marks, in which Complainant has rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) it is not affiliated with or authorized by Complainant to use Complainant’s marks in its Domain Name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because a use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services. The first and second allegations appear to be accurate. For this reason, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Panel looks to the evidence offered by Respondent in support of its claim of rights or legitimate interests.
Respondent asserts it has rights and legitimate interests in the Domain Name in that it hosts a legitimate business from it, and the Domain Name is highly descriptive of the services Respondent offers at that web site. Where a respondent shows that it uses a domain name in accordance with its descriptive terms, a bona fide offering may exist. See Game Truck Licensing, LLC v. Domains By Proxy, LLC / Chris Hampton, D2012-1964 (WIPO Jan. 12, 2013) (stating, “[T]he dispositive factor is whether a respondent ‘registered and is using the disputed domain name to describe his product/business and to profit from the generic or highly descriptive value of the words without intending to take advantage of a complainant’s rights in the words”).
Policy ¶ 4(c) lists three additional nonexclusive circumstances that can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii). Among them is the following:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; . . . .
Here, Respondent submitted evidence that since March 2017 it invested significant capital, time and effort to build its company, team, website, technology, infrastructure, and the software that provides consumers with its resume building service. See, Response, page 2, and Declarations of Anton Georgiev Topalov and Samuel Dimitrov attached to the Response as Annexes 1 and 3 respectively. Respondent also states that it offers “instant” resume services and that the “My Resume Now” system does what it says, namely, it “provides a consumer with the ability to create their resume online (now) in real time.” See, Response, page 3, and Topalov Declaration, Ibid. Respondent submitted documentary evidence that it acquired the Domain Name at a Sedo auction in June 2017, and states that it was attracted to the name at that time because it described the type of services it planned for its proposed website. Respondent states categorically that at that time it had no knowledge of Complainant, its marks or its presence in the online resume market. See, Topalov and Dimitrov Declarations, Ibid. Respondent also submitted a screenshot of its web site at page 10 of the Response, which appears to demonstrate that it is actively using the Domain Name to offer the resume services it describes in its Response.
The Panel recognizes that it is easy for a respondent to say that it had no knowledge of a complainant’s business or trade name when it registered its domain name. The plausibility of such denial, however, diminishes as the fame or notoriety of the complainant increases. Certainly, Complainant’s marks are not famous to a general audience, but considering that Respondent is in the same line of business as Complainant, the question of its actual awareness of Complainant and its marks naturally arises. Nevertheless, Complainant has the burden of proof, and it submitted no evidence of its standing or presence in the online resume market. It might have provided data about its marketing, advertising, gross receipts, hit rates on its web site, or any other factors that might tend to demonstrate a notable, well-known presence in this field of endeavor, but it did not. On the evidence available, the Panel concludes that Complainant has failed to prove that Respondent knew of Complainant’s marks when it registered the Domain Name, or that Respondent has intended to trade off the goodwill and reputation of Complainant by registering and using the Domain Name as it has. The Panel finds that before any notice of a dispute about the Domain Name, Respondent made demonstrable preparations to use, and did use the Domain Name in connection with a bona fide offering of goods or services. See, SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website… The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”)
For the reasons set forth above, the Panel finds that Respondent has rights and legitimate interests in the Domain Name.
Registration and Use in Bad Faith
Having found that Respondent has rights and legitimate interests in the Domain Name, the Panel need not address the issue of bad faith registration and use, and it declines to do so. See, Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <myresumenow.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Chair
Michael A. Albert, Panelist
DianeThilly Cabell, Panelist
Dated: November 3, 2017