The Complainants are Monster Worldwide, Inc. United States of America, and Monster Worldwide Ireland Limited, Ireland, represented by Matheson Ormsby Prentice, Ireland.
The Registrant is Monster Finance Limited of Dublin, Ireland.
The disputed domain name <monsterfinance.ie> is registered with IE Domain Registry Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2009. On February 25, 2009, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On March 5, 2009, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 13, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on March 19, 2009. In accordance with the Rules, paragraph 5.1, the due date for Response was April 20, 2009. The Registrant did not submit any response. Accordingly, the Center notified the Registrant's default on April 21, 2009.
The Center appointed Adam Taylor as the sole panelist in this matter on May 6, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainants are a leading online recruitment business operated via a website at “www.monster.com” as well as 25 local language and content sites in 23 countries worldwide. The Complainants' total turnover was €3,174,595 in 2005, €5,007,715 in 2006 and €6,016,743 in 2007.
The local content and language site for Ireland is “www.monster.ie”, which was acquired by the Complainants in early 2001. There are currently over 290,000 visits per month to the site, which currently includes 230,000 CVs. On average, more than 581 new jobs are posted there every day.
The Complainants' marketing spent on TV advertisements in the Republic of Ireland was €66,178 in September 2007 and €44,118 in October 2007. The Complainants' total marketing spent on TV, radio, Internet and press advertisements in Ireland in the first quarter of 2008 was €160,837.
The First Complainant owns a range of MONSTER-related registered trade marks including CTM registration No. 000706655 for the word MONSTER registered on August 27, 1999, in respect of class 42.
The Registrant registered the disputed domain name on May 21, 2008.
The Registrant Company was incorporated on May 29, 2008.
The Complainant's solicitors sent a cease and desist letter to the Registrant on September 23, 2008.
On September 24, 2008, a Mr. Kazmi, director of the Respondent, telephoned the Complainants' solicitors stating that he received the letter and that he would respond in writing the following week. He indicated that he would transfer the domain names to the Complainants if they reimbursed the substantial costs that he had incurred in setting up the company and marketing his business. No figure for such costs was disclosed by Mr Kazmi but he stated that he was not talking about “millions”. Notwithstanding a follow up letter sent by the solicitors on October 1, 2008, the Registrant never replied in writing to the Complainants' first letter.
As of January 20, 2009, there was a recruitment website at the disputed domain name branded “Monster Finance”.
Identical or Misleadingly Similar
Aside from their registered trade marks, the Complainants have substantial goodwill in the name MONSTER throughout the island of Ireland and they hold a common law trade mark in the name MONSTER which is protected in the island of Ireland. The name MONSTER is not descriptive and their use of the name MONSTER has ensured that it has acquired distinctiveness and a secondary meaning in the island of Ireland.
The names MONSTER and MONSTER FINANCE are misleadingly similar. The Complainants assert that a domain name that wholly incorporates a Complainants' registered mark may be sufficient to establish misleading similarity. The Complainants submit that the mere addition of a common term such as “finance” to the MONSTER mark is of no import and it does not change the overall impression of the designation as being a domain name connected to the Complainants. The descriptive component added to the Complainants' protected identifier(s) even adds to the confusion
Proof of the confusing similarity can be seen from an email sent by Alstom, one of the Complainants' major clients, querying whether they should mention the Registrant's website to their financial community.
Rights or Legitimate Interests
The Complainants are not aware of any evidence that at any material time the Registrant has ever had any rights or legitimate interests in, or has ever indicated any legitimate use of, the disputed domain name. The Registrant has no link whatsoever with the Complainants. The Complainants have not licensed or otherwise authorised the Registrant to use the Complainants' protected identifier(s).
Paragraphs 3.1.2 and 3.1.3 of the Policy are not relevant to the Registrant and the disputed domain name. In respect of paragraph 3.1.1 of the Policy, the Registrant is not using the disputed domain name in connection with a good faith offering of goods or services or the operation of a business.
The Registrant's efforts to attract Internet users to its website through confusion with the Complainants' protected identifier(s) obviate any possibility that the disputed domain name is being used in connection with either the good faith offering of goods or services or operation of a business.
The Registrant's use of a confusingly similar domain name on a website offering for sale overlapping products and services is not a bona fide offering of goods or services.
Paragraph 1.2 of the Policy provides that the registration of a .ie domain name does not constitute evidence of rights in law or legitimate interests in accordance with paragraph 1.1.2 of the Policy. The registration of a company name per se does not constitute evidence of demonstrable preparations in accordance with paragraph 3.1.1 of the Policy. Neither the registration by the Registrant of the company name Monster Finance Limited nor the registration of the disputed domain name entitles the Registrant to use that name in the course of business if it would conflict with the Complainants' or third party protected identifier(s). As the website for the Irish Companies Registration Office makes clear the registration of a company name “does not authorise the use of the name if its use could be prohibited for other reasons. It should not for instance be taken as an indication that no rights (e.g. trade mark rights) exist in the name”.
Based on the significant degree of renown of the Complainants' protected identifier(s) in the island of Ireland and the Registrant's failure to respond in writing to the Complainants' letter explain either (i) the circumstances in which the disputed domain name was chosen and is subsequently being used or (ii) whether the Registrant has any rights and/or legitimate interests in the disputed domain name under paragraph 3.1 of the Policy, the Registrant does not have any rights or legitimate interests in the disputed domain name.
The Complainants must establish at least a prima facie case under paragraph 1.1.2 of the Policy and, although such burden of proof rests with the Complainants, this could result in the impossible task of proving a negative, requiring information that is often primarily within the knowledge of a Registrant. The Complainants have established a prima facie case that the Registrant has no rights or legitimate interests in the disputed domain name. The evidential onus should shift to the Registrant to demonstrate that the Registrant has rights or legitimate interests in the disputed domain name as these are matters that are primarily within the Registrant's knowledge.
Registered or Used in Bad Faith
The disputed domain name has been registered and/or used primarily in order to prevent the Complainants from reflecting its protected identifier(s). At the time of registration of the disputed domain name, the Registrant was well aware of the reputation of the Complainants' protected identifier(s). The Registrant is situated in Dublin. Given the significant degree of renown of the Complainants' protected identifier(s) in the island of Ireland, it is highly unlikely that the Registrant chose the disputed domain name for its descriptive qualities or some other genuine reason independently of the Complainants' protected identifier(s).
The Registrant has registered or is using the disputed domain name primarily for the purpose of interfering with or disrupting the business of the Complainants. The Registrant cannot but be aware of the reputation in the island of Ireland of the Complainants' protected identifier(s). The Registrant's use of the Complainants' protected identifier(s) in the disputed domain name and also on the site itself is intended to lead consumers to believe that they had reached the Complainants' website and so divert Internet traffic from the Complainants thereby interfering with the Complainants' business.
Further, a major client of the Complainants emailed the French group company of the Complainants on September 22, 2008 querying whether they should mention Monster Finance to their financial community. This email further evidences the interference by the Registrant in the Complainants' conduct of its business with their customers.
The Registrants have through their use of the disputed domain name, intentionally attempted to attract Internet users to a website by creating confusion with the Complainants' protected identifier(s). The Registrant's use of the disputed domain name and the mark MONSTER FINANCE which are similar to the Complainants' trade marks for identical services gives rise to a likelihood of confusion in the eyes of consumers. The use of the disputed domain name incorporating the Complainants' MONSTER trade mark and indicia such as the monster figure on the Registrant's website are likely to confuse consumers into falsely associating the services being offered by the Registrant with the services offered by the Complainants and/or that there is some connection or association between the Registrant and the Complainants.
There is no bona fide business behind the Respondent's website as, when one conducts a search even in very broad terms, there are no jobs found in the search results.
Use of the disputed domain name by the Registrant is an attempt to confuse Internet users under the concept of “initial interest confusion” where Internet users may be confused as to the ownership of the disputed domain name given the fact that it is identical or misleadingly similar to the Complainants' protected identifier(s).
The disputed domain name has been selected and is being used with the intent to confuse and redirect Internet users to the Registrant's website. The Registrant has designed its website in such a way as to create further confusion on the part of Internet users into thinking they have reached the Complainants' website or a business associated with the Complainants.
The disputed domain name has been used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainants have rights. Given the similarity between the Complainants' protected identifier(s) and the disputed domain name, there can be no doubt that Internet users seeking the Complainants and their products, particularly in the area of finance, will be drawn to the Registrant's website and the Respondent's use of the disputed domain name will dilute the Complainants' protected identifier(s). Internet users attempting to reach the Complainants' website may believe that the website in question is associated with the Complainants or endorsed by them in some way, thereby diluting the reputation of the Complainants' protected identifier(s) in that manner.
The Registrant did not reply to the Complainants' contentions.
The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainants have rights.
Under paragraph 1.3.1 of the Policy, protected identifiers include “trade and service marks protected in the island of Ireland”.
Here, the First Complainant owns a Community Trade Mark for the word MONSTER. The Community Trade Mark is protected in the island of Ireland and therefore constitutes a “protected identifier”.
The Complainants have also acquired common law rights in the term MONSTER by virtue of their trading activities under that name in the island of Ireland since at least 2001. This also constitutes a protected identifier.
Apart from the domain suffix “.ie” (which is immaterial in this context), the disputed domain name differs from the protected identifier only by the addition of the generic word “finance”. This difference is insignificant and the disputed domain name still has the obvious potential to mislead the public, given the inclusion of the distinctive term MONSTER in the domain name.
The Panel concludes that the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights.
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the Domain Name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.
The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.
The factor in paragraph 3.1.1 provides:
“where the registrant can demonstrate that, before being put on notice of the complainant's interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.
The Registrant has used the disputed domain name in connection with an offering of services but, for the reasons explained below, the Panel's view is that the Registrant's use of the disputed domain name has not been in good faith.
Paragraph 3.1.2 does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.
In the Panel's view, the registration of the corporate name “Monster Finance Limited” does not, of itself, generate rights or legitimate interests either. As the Complainants rightly say, such registration would not entitle the Registrant to use the name in the course of business if it would conflict with third party trade mark rights. The Complainants refer to the website of the Irish Companies Registration Office which states that registration of a company name “does not authorise the use of the name if its use could be prohibited for other reasons. It should not for instance be taken as an indication that no rights (e.g. trade mark rights) exist in the name”.
Furthermore, the Panel notes that the Registrant Company was incorporated within eight days of registration of the disputed domain name, the whois for which cites “Corporate Name” as the domain registration category. In the absence of any credible explanation otherwise, this suggests to the Panel that the Registrant was incorporated primarily to fulfill the requirements of the Registration Policy of IE Domain Registry Limited.
Other decisions under the Policy have taken a similar approach to the registration of business names. See, e.g, Eoin Murphy and Ciaran Murphy trading as Wise Owl v. Paul Baird, WIPO Case No. DIE2006-0002; Kelkoo SA v. Lina Musinkiene, WIPO Case No. DIE2007-0002; Facebook Inc. v. Talkbeans Media Limited, WIPO Case No. DIE2007-0009.
Paragraph 3.1.3 does not apply as the disputed domain name is not a geographical indication.
The Complainants have not licensed or otherwise authorized the Registrant to use their trade mark.
The Complainants have established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Registrant.
The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name.
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The Panel is satisfied that the Registrant registered the disputed domain name with knowledge of the Complainants' trade mark. The Complainant had been operating a significant online recruitment business under the name MONSTER in Ireland for some seven years before the registration of the disputed domain name. In the Panel's view it is highly likely that the Registrant chose the disputed domain name including the distinctive word MONSTER for its finance-related recruitment website with the Complainants' trade mark very much in mind. Certainly the Registrant has not come forward to suggest otherwise, either in answer to the Complainants' cease and desist letter or by filing a Response in this proceeding.
Further, there is evidence of actual confusion. The Complainants have produced an email from one of its customers which clearly believed that the Registrant's website was connected with the Complainants.
For the above reasons, the Panel is of the view that, for the purposes of paragraph 2.1.4 of the Policy, the Registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a website or other on-line location by creating confusion with a protected identifier in which the Complainants have rights.
The Panel concludes that the disputed domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name, <monsterfinance.ie> be transferred to the Second Complainant, Monster Worldwide Ireland Limited.
Adam Taylor
Sole Panelist
Dated: May 22, 2009