Insperity, Inc. v. c/o INSPARITY.COM
Claim Number: FA1107001397693
Complainant is Insperity, Inc. (“Complainant”), represented by Jered Matthysse of Pirkey Barber LLP, Texas, USA. Respondent is c/o INSPARITY.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insparity.com>, registered with NamesDirect.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 11, 2011.
On July 8, 2011, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <insparity.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect 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 July 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2011 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@insparity.com. Also on July 11, 2011, 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 August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <insparity.com> domain name is confusingly similar to Complainant’s INSPERITY mark.
2. Respondent does not have any rights or legitimate interests in the <insparity.com> domain name.
3. Respondent registered and used the <insparity.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Insperity, Inc., has been previously known by the trade name “Administaff, Inc.,” and is a professional employer organization with fifty-five offices in the United States. Complainant has provided a variety of human resources and business solutions services for more than twenty-five years. In a news release on February 28, 2011, Complainant publicly unveiled its new INSPERITY mark and trade name announcing its intention to rename itself effective March 3, 2011. Complainant has recently been assigned the rights to a trademark application for the word mark INSPERITY from its previous owner.
Respondent, c/o INSPARITY.COM, registered the <insparity.com> domain name on March 2, 2011. Respondent’s disputed domain name resolves to a website that features pay-per-click links to companies that are unrelated to Complainant’s business. Respondent has also offered to sell the disputed domain name to Complainant for $1,750.
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, while presenting the Panel with evidence of a current trademark application for its mark, does not currently own a valid trademark registration for its asserted mark. The Panel notes, however, that owning a trademark registration is only one way that a complainant can establish rights in its mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). If Complainant can establish common law rights in its asserted mark by submitting evidence of its use of the mark in the public eye, then it can satisfy Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
In this instance, Complainant presents several pieces of evidence showing how it has come to use the INSPERITY mark in commerce. Complainant first submits a Business Wire news release that is dated February 28, 2011, to show that Administaff, Inc. formally announced that it was changing its corporate identity to Insperity, Inc. effective March 3, 2011. Complainant has also submitted evidence to show how it is using the mark through its official website for its performance management software, as well as various levels of employment services. Further, Complainant has also submitted a trademark assignment record from the United States Patent and Trademark Office ("USPTO") dated July 6, 2011 showing that Complainant owns the trademark application rights for the word mark INSPERITY (Serial No. 85,043,556 filed May 20, 2010). The Panel notes that it may consider any and all evidence on record and make a determination of whether such evidence is sufficient for a finding of common law rights under Policy ¶ 4(a)(i). See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”). Therefore, the Panel concludes that Complainant has sufficiently established rights in its INSPERITY mark under Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001)("setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.").
Complainant goes on to argue that Respondent’s <insparity.com> domain name is confusingly similar to Complainant’s INSPERITY mark. Complainant notes that the domain name merely inserts the letter “a” in place of the letter “e” in its mark while adding the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant’s assertions and finds that Respondent’s disputed domain name is confusingly similar to the INSPERITY mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <insparity.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once the Complainant has produced a prima facie case, the burden shifts to Respondent to show they do have a right or legitimate interest 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <insparity.com> domain name under Policy ¶ 4(c).
Complainant argues that Respondent is neither commonly known by the disputed domain name nor has Respondent been given authorization to use Complainant’s mark in any way. The WHOIS information identifies “c/o INSPARITY.COM” as the registrant of the domain name. Respondent has not come forward with any evidence indicating that it is commonly known by the disputed domain. Therefore, the Panel finds that, although Respondent appears to be commonly known by the disputed domain name, absent affirmative evidence indicating such, Respondent is not commonly known by the <insparity.com> domain name under Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant argues that Respondent is using the disputed domain name to resolve to a website that displays third-party links to unrelated businesses. Complainant further submits e-mail correspondence from Respondent which indicates that the domain name is used in connection with a monetized parking page. The Panel finds that such use of a confusingly similar domain name does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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)).
Complainant also submits information to show that Respondent offered to sell the disputed domain name to Complainant for $1,750. Complainant’s evidence includes e-mail correspondence between Complainant’s attorney and someone representing itself as the owner of the domain name. Such correspondence, which was initiated by Complainant, culminates in Respondent saying, “…so I am authorized to resolve this quickly by offering it at a discounted price of $1,750.” The Panel finds that such correspondence and offer to sell the domain name is further evidence that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Lastly, Complainant notes that the domain name at issue is a typographical misspelling of its INSPERITY mark. The Panel finds that registration of a domain name that is a misspelling of Complainant’s mark is further evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As per above, the Panel has found that Respondent attempted to sell the disputed domain name for a “discounted price of $1,750” to Complainant. This type of sale offer strongly indicates that Respondent registered the domain name at issue with intent to sell it back to Complainant for a price above its acquisition costs. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant has also submitted evidence and arguments indicating that Respondent is using the domain name at issue as a monetized or pay-per-click website with links to various unrelated companies. The Panel agrees with such cases as MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) and Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), in finding that where Respondent is using the domain name at issue to display third-party links to unrelated website and presumably profiting from such use, that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that the timing of Respondent’s domain name registration is indicative of bad faith. Complainant submits that it made a public announcement of its corporate name change to INSPERITY on February 28, 2011. In its announcement, Complainant stated that it would officially be operating under the new name as of March 3, 2011. Respondent registered the domain name at issue on March 2, 2011. The Panel finds that it is unlikely that Respondent would have registered such a domain name absent the public announcement by Complainant. Therefore, the Panel finds that Respondent acted in opportunistic bad faith in its registration of the domain name, which has been found to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Lastly, the Panel has already found that Respondent’s registration and use of the <insparity.com> domain name constitutes typosquatting. Previous panels have determined that registration and use of a typosquatted domain name is grounds for a finding of bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). This Panel agrees with such decisions, and finds that Respondent’s registration and use of the <insparity.com> domain name is further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insparity.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 18, 2011
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