Robert Half International Inc. v. Greg Timm
Claim Number: FA1008001342142
Complainant is Robert Half International Inc. (“Complainant”), represented by Britton Payne, of Foley & Lardner LLP, New York, USA. Respondent is Greg Timm (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalfconsulting.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2010.
On August 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <roberthalfconsulting.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2010 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@roberthalfconsulting.com by e-mail. Also on August 26, 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 September 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <roberthalfconsulting.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark.
2. Respondent does not have any rights or legitimate interests in the <roberthalfconsulting.com> domain name.
3. Respondent registered and used the <roberthalfconsulting.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Robert Half International Inc., provides employment placement and staffing services throughout the United States. Complainant also provides consulting services. Complainant uses the <roberthalf.com> domain name to resolve to its official website. In addition, Complainant holds trademark registrations with the United States Patent and Trademark (“USPTO”) office for the ROBERT HALF mark (e.g., Reg. No. 1,156,612 registered June 2, 1981).
Respondent, Greg Timm, registered the disputed domain name on July 22, 2010. The disputed domain name resolves to a website that contains the message “This Web site is coming soon.”
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in the ROBERT HALF mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,156,612 registered June 2, 1981). The Panel determines that these trademark registrations sufficiently prove Complainant’s rights in the ROBERT HALF mark under Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends Respondent’s <roberthalfconsulting.com> domain name is confusingly similar to its ROBERT HALF mark. Complainant asserts Respondent fully incorporates its mark in the disputed domain name and then merely adds the descriptive term “consulting,” which describes Complainant’s primary field of business. In addition, deleting the space between the words in a complainant’s mark and attaching the generic top-level domain (“gTLD”) “.com” do not negate a finding of confusingly similar. The Panel finds Respondent’s alterations do not render its disputed domain name distinct from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds the <roberthalfconsulting.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the <roberthalfconsulting.com> domain name and then the burden shifts to Respondent to demonstrate it has rights or legitimate interests. The Panel may infer that Respondent’s failure to submit a Response indicates that Respondent lacks rights and legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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.”). However, the Panel will examine the record to determine whether Respondent possesses rights under Policy ¶ 4(c).
Complainant asserts it has not given Respondent permission to use any of its mark, including its ROBERT HALF mark, in a domain name. Moreover, the disputed domain name lists “Greg Timm” as the registrant of the disputed domain name, which the Panel finds is not similar to the <roberthalfconsulting.com> domain name. Accordingly, the Panel finds Complainant’s assertions and the WHOIS information indicate that Respondent is not commonly known by the <roberthalfconsulting.com> domain name under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant submits a screen shot of the website resolving from the <roberthalfconsulting.com> domain name. This image shows a parked site that prominently displays the message “This Web site is coming soon.” The resolving website also displays figures of four individuals, one that appears to be standing next to an office chair. The Panel finds that Respondent has failed to make active use of a domain name that is confusingly similar to Complainant’s mark. Therefore, the Panel finds Respondent does not use the <roberthalfconsulting.com> domain name to make 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 Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant states it originally contacted “Wade Linker” regarding the disputed domain name and claims that this individual is the same person as Respondent. Complainant argues that the registrant information changed from “Wade Linker” to “Greg Timm” but the WHOIS information was not updated to reflect a transfer of the domain name. Consequently, Complainant avers Respondent invited it to make an offer to purchase the <roberthalfconsulting.com> domain name after Complainant sent Respondent a cease-and-desist letter. In response to Respondent’s invitation, Complainant claims it reiterated that it had not made Complainant an offer and again demanded that Respondent transfer the disputed domain name to Complainant. Complainant alleges that Respondent replied that it would be “transferring the domain name to one of the current bidders.” Based on this evidence, the Panel concludes “Wade Linker” and Respondent are the same person and that Respondent attempted to sell the disputed domain name to Complainant or a third party. Therefore, the Panel finds this offer provides further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As previously discussed, Complainant provides evidence that Respondent offered to sell the disputed domain name to Complainant. The Panel also finds that Respondent offered to sell the disputed domain name to the highest bidder, presumably in excess of Respondent’s out-of-pocket costs. Therefore, the Panel finds Respondent has engaged in registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Additionally, prior panels have found that failure to make active use of a domain name that is confusingly similar to another’s mark can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). Here, Respondent’s disputed domain name is confusingly similar to Complainant’s ROBERT HALF mark. Furthermore, Respondent registered the <roberthalfconsulting.com> domain name almost 30 years after Complainant first registered its ROBERT HALF mark with the USPTO. Therefore, the Panel finds Respondent’s failure to make active use of the disputed domain name in this case qualifies as bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roberthalfconsulting.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 29, 2010
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