Robert Half International Inc. v. Erika Slade
Claim Number: FA1802001773441
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein and AJ Schumacher of Foley & Lardner LLP, New York, USA. Respondent is Erika Slade (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalf-us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2018; the Forum received payment on February 26, 2018.
On February 28, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <roberthalf-us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2018 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@roberthalf-us.com. Also on February 28, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 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 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
1. Complainant, Robert Half International Inc., is one of the world’s largest specialized employment staffing firms. Complainant uses the ROBERT HALF mark to provide and market products and services. Complainant has rights in the ROBERT HALF mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,156,612, registered Jun. 2, 1981).
2. Respondent’s <roberthalf-us.com>[1] domain name is confusingly similar to Complainant’s ROBERT HALF mark as it wholly incorporates the mark before removing the space between “ROBERT” and “HALF,” adding the generic geographic descriptor “US,” a hyphen, and the “.com” generic top level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <roberthalf-us.com> domain name. Respondent is not commonly known by the domain name. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent has not made an active use of the domain name.
4. Respondent registered and uses the <roberthalf-us.com> domain name in bad faith. Respondent is holding the domain name with no apparent use. Respondent registered the domain name with actual knowledge of Complainant’s rights in the ROBERT HALF mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ROBERT HALF mark. Respondent’s domain name is confusingly similar to Complainant’s ROBERT HALF mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <roberthalf-us.com> domain name and that Respondent registered and uses the domain name in bad faith.
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(f), 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 (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.”).
Complainant has rights in the ROBERT HALF mark based upon its registration with the USPTO (e.g. Reg. No. 1,156,612, registered June 2, 1981). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the ROBERT HALF mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <roberthalf-us.com> domain name is confusingly similar to the ROBERT HALF mark as it contains the mark in its entirety (minus the space) and adds the geographic descriptor “US, separated by a hyphen, and the gTLD “.com.” Such slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark or removal of a space, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Steelcase Inc. v. Hermann, FA1605001674589 (Forum June 7, 2016) (finding the domain name <us-steelcase.com> confusingly similar to complainant’s STEELCASE mark despite the addition of the hyphen and generic geographic descriptor “us”). Similarly, removal of spaces and the addition of a gTLD are both irrelevant in determining whether a domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). The Panel agrees with Complainant and finds that the <roberthalf-us.com> domain name does not contain changes that would sufficiently distinguish it from the ROBERT HALF mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <roberthalf-us.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <roberthalf-us.com> domain name, as Respondent is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Erika Slade.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <roberthalf-us.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <roberthalf-us.com> domain name is shown by its failure to use the <roberthalf-us.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s domain name resolves to an inactive website. When a respondent is not using a domain name in connection with an active website, the respondent may not be able to avail itself of Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Therefore, the Panel agrees that <roberthalf-us.com> is inactively held and as such is not used for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s failure to make an active use of the <roberthalf-us.com> domain name shows bad faith. Inactive use of a domain names that is confusingly similar to a complainant’s mark is considered bad faith under Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). As noted, the record shows that Respondent’s domain resolves to a page stating that the website does not exist. The Panel agrees with Complainant and finds that Respondent registered and uses the <roberthalf-us.com> domain name in bad faith pursuant to Policy 4(a)(iii).
Finally, Complainant argues that Respondent registered the <roberthalf-us.com> domain name with actual knowledge of Complainant’s mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the a domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark . . . .”). The record shows that Complainant has used the ROBERT HALF mark since 1948, and since that time, Complainant has become well-known and has established notoriety and goodwill in the worldwide marketplace. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the ROBERT HALF mark when it registered the <roberthalf-us.com> domain name, thereby supporting a finding of bad faith under 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 <roberthalf-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 29, 2018
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