Atterro, Inc. v. Candice Lightholder / Staffing Pro
Claim Number: FA1204001439261
Complainant is Atterro, Inc. (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Candice Lightholder / Staffing Pro (“Respondent”), represented by Scott J. Daruty, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prostaff4hire.info> and <prostaffing.biz>, registered with GoDaddy.com LLC.
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 electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 13, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <prostaff4hire.info> and <prostaffing.biz> domain names are registered with GoDaddy.com LLC and that Respondent is the current registrant of the names. GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com LLC 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 April 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2012 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@prostaff4hire.info and postmaster@prostaffing.biz. Also on April 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prostaff4hire.info> and <prostaffing.biz> domain names are confusingly similar to Complainant’s PRO STAFF mark.
2. Respondent does not have any rights or legitimate interests in the <prostaff4hire.info> and <prostaffing.biz> domain names.
3. Respondent registered and used the <prostaff4hire.info> and <prostaffing.biz> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a personnel search and placement consulting service and has used the PRO STAFF mark in commerce since 1980. Complainant owns rights in the PRO STAFF mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,194,437 registered April 27, 1983).
Respondent registered the <prostaff4hire.info> and <prostaffing.biz> domain names on November 25, 2011 and September 27, 2011, respectively.
The disputed domain names resolve to website that purport to offer services similar to those provided by Complainant.
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."
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.
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.”).
The Panel finds that Complainant has rights in its PRO STAFF mark due to its registrations of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Respondent’s <prostaff4hire.info> and <prostaffing.biz> domain names are confusingly similar to Complainant’s PRO STAFF mark. Both domain names use the mark in its entirety and merely add a generic top-level domain (“gTLD”) and the descriptive terms “hire” or the number “4.” The panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), stated that adding a gTLD to a domain name is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. The panel in Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), found that adding a descriptive word to a mark in a domain name does not change the confusing similarity between the mark and the domain name. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel held that the addition of the number “4” in the domain name did nothing to change the impact on the viewer of the mark and found confusing similarity existed. In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel stated that adding letters to words does not create a distinct mark from the complainant’s mark. The Panel finds that Respondent’s domain names are not sufficiently altered to distinguish the disputed domain name from the PRO STAFF mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <prostaff4hire.info> and <prostaffing.biz> domain names, that Respondent is not commonly known by the names, and that Respondent does not have permission to use the PRO STAFF mark in a domain name. Complainant claims that the previous registrant was identified in the WHOIS records for both domain names as “Kathleane O’Leary” of “K.C.O. Services” and the current registrant is listed as “Staffing Pro,” by “Candice Lightholder,” neither of which bear any similarity to the disputed domain names. The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), held that nothing in the respondent’s WHOIS information demonstrated that it was commonly known by the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel found that the respondent was not commonly known by the disputed domain name when all the evidence on record, as well as the WHOIS information, did not indicate that the respondent was commonly known by the disputed domain names, and the respondent had no authorization to register the complainant’s mark. The Panel finds that Respondent is not commonly known by the <prostaff4hire.info> and <prostaffing.biz> domain names.
Complainant alleges that Respondent’s use of the disputed domain names to provide information and services that are similar to Complainant’s offered services is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain names. Complainant contends that the disputed domain names are used to host a website that contains links to an organization called “Project Pay Day” and that Respondent receives click-through fees from the links. The Panel finds that hosting a website that contains links that appear to compete with Complainant’s business and generate financial profit for Respondent does not reflect 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is attempting to attract Internet users to its website for financial profit through the use of two confusingly similar domain names by providing links to websites alleging to provide similar services to those Complainant provides. Respondent used the disputed domain names with the intention of creating confusion as to the affiliation between the mark and the domain names. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), the panel found that respondent’s use of the domain name to maintain a website that offered similar services to that offered by the complainant so as to confuse the user that the complainant sponsored the website was bad faith registration and use. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), the panel stated that using the disputed domain name, which contained the complainant’s mark, in order to attract Internet users to the respondent’s site to offer competing services violated Policy ¶ 4(b)(iv). Thus, the Panel finds that Respondent registered and uses the <prostaff4hire.info> and <prostaffing.biz> domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that 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 <prostaff4hire.info> and <prostaffing.biz> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page