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Predicate for Bad Faith, Competing Services Incorporating the Trademark

The Policy has built in protections for competitors whose Internet shingles bear a similarity to descriptive trademarks, but protection does not extend to competitors who incorporate the complainant’s trademark. Many trademarks composed of common words while descriptive can also be distinctive. The Complainant in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) owns RESUME PRO. The disputed domain name is <resumeprowriters>. Where the dominant part of the domain name is the complainant’s trademark adding a generic term – here “writers” – does not make it distinctive. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).

The argument that “common and generic terms” cannot be found confusingly similar to a complainant’s trademark only applies to those cases in which the domain name may be similar to the trademark but not confusing, as for example Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) THINK AND GROW RICH and <flipandgrowrich.com>. “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law,” David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).

The Respondent in Fashion Career offered two other arguments. First, that offering resume writing services is a complete defense under paragraph 4(c)(i) of the Policy. However, the “problem with this argument is, of course, that the Disputed Domains are confusingly similar to Complainant’s Mark. As other Panels have repeatedly held, a respondent’s use of a disputed domain name to offer competing services on the resolving website is not a bona fide offering of goods or services” citing Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).

Respondent’s second argument points to its registration name. However, despite “the mere fact of its registration of resumeprowriters.com under the name RESUME PRO WRITERS GUILD, Respondent has failed to offer any evidence that it is commonly known by the Disputed Domains.” Paragraph 4(c)(ii) is construed to mean that the respondent was known by that name prior to the registration. “Tellingly, Respondent never even stated or claimed that it is or has been commonly known by that name. It offered no evidence of what the name RESUME PRO WRITERS GUILD is or represents…. If the Respondent were in fact using or were commonly known by this name … records would be readily available, but no such evidence was offered.” Decisions are made upon a record; lack of evidence is fatal to the party with the burden of supporting its contention.

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