Hire Thinking, Inc. v. Philana Dhimkana
Claim Number: FA1003001314345
Complainant is Hire Thinking, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantagehumanresourcing.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 18, 2010.
On March 21, 2010, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <advantagehumanresourcing.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2002 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 postmaster@advantagehumanresourcing.com. Also on March 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantagehumanresourcing.com> domain name is identical to Complainant’s ADVANTAGE HUMAN RESOURCING mark.
2. Respondent does not have any rights or legitimate interests in the <advantagehumanresourcing.com> domain name.
3. Respondent registered and used the <advantagehumanresourcing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hire Thinking, Inc., delivers temporary, temporary-to-hire, and direct hire services, workforce management services and payroll compliance services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ADVANTAGE HUMAN RESOURCING mark (e.g., Reg. No. 2,428,029 issued on February 13, 2001).
Respondent, Philana Dhimkana, registered the <advantagehumanresourcing.com> domain name on January 9, 2006. The disputed domain name resolves to a website that provides links to third-party websites, including staffing and recruiting companies that compete with Complainant’s business.
Respondent
has a history of registering domain names that infringe upon the trademark
rights of others and has been ordered by previous UDRP panels to transfer the
disputed domain names to the respective complainants. See, e.g., Sunoco, Inc. v. Dhimkana, FA
1110741(Nat. Arb. Forum Jan. 2, 2008); Boehringer
Ingelheim Pharma GmbH & Co. KG v. Dhimkana, D2006-1594 (WIPO Feb. 7,
2007).
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."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
The Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) through its registration of the ADVANTAGE HUMAN RESOURCING mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s disputed domain name is virtually identical to its ADVANTAGE HUMAN RESOURCING mark. Respondent incorporates Complainant’s mark in its entirety in the disputed domain name, and simply deletes the spaces between the three words and affixes the generic top-level domain (“gTLD”) “.com”. These modifications do not distinguish Respondent’s disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s disputed <advantagehumanresourcing.com> domain name is identical to Complainant’s ADVANTAGE HUMAN RESOURCING mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed <advantagehumanresourcing.com> domain name. The burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Complainant states that it is not affiliated with Respondent nor is Respondent authorized to use its ADVANTAGE HUMAN RESOURCING mark in a domain name. With no evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues Respondent’s use of the <advantagehumanresourcing.com>
domain name to receive commercial gain does not create rights or legitimate
interests in Respondent. Respondent’s disputed
domain name resolves to a website that provides links to third-party websites,
including staffing and recruiting companies that compete with Complainant’s
business. The Panel finds Respondent’s
use of a domain name that is identical to Complainant’s mark to redirect
Internet users to third-party websites for Respondent’s own commercial gain
does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that the respondent’s commercial use of a confusingly similar domain name
suggests that the respondent lacks rights or legitimate interests in the
disputed domain name); see also Disney Enters., Inc. v. Kamble, FA
918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been subject to numerous UDRP proceedings,
wherein the disputed domain names were ordered to be transferred from
Respondent to the respective complainants in those cases, evidence of a pattern
of bad faith. See,
e.g., Sunoco, Inc. v. Dhimkana, FA 1110741(Nat. Arb. Forum Jan. 2, 2008);
Boehringer Ingelheim Pharma GmbH &
Co. KG v. Dhimkana, D2006-1594 (WIPO Feb. 7, 2007). The Panel
finds that Respondent has engaged in a pattern of bad faith registration and
use under the Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark,
D2004-1028 (WIPO Jan. 22, 2005 (finding that
“Respondent has registered the disputed domain name, <aria.com>, to
prevent Complainant from registering it” and taking notice of another Policy
proceeding against the respondent to find that “this is part of a pattern of
such registrations”); see also Westcoast Contempo
Fashions Ltd. v. Manila Indus., Inc., FA 814312
(Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use
pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of
numerous UDRP proceedings where panels ordered the transfer of disputed domain
names containing the trademarks of the complainants).
Respondent uses the disputed domain name to provide links to Complainant’s competitors. The Panel finds Respondent’s use of the <advantagehumanresourcing.com> domain name to redirect Internet users to a website that lists links to third-party websites disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Finally, Respondent is using the virtually identical disputed domain name to attract Internet users to Respondent’s website so that it can receive commercial gain from click-through fees. Internet users may become confused as to Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the Panel finds this behavior provides further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advantagehumanresourcing.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 29, 2010
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