DECISION

 

Robert Half International Inc. v. Jack Chang

Claim Number: FA1806001794086

PARTIES

Complainant is Robert Half International Inc. (“Complainant”), represented by Robert L. Weisbein of Foley & Lardner LLP, New York, USA.  Respondent is Jack Chang (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theroberthalf.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 27, 2018; the Forum received payment on June 29, 2018.

 

On June 28, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <theroberthalf.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@theroberthalf.com.  Also on July 9, 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 August 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, Robert Half International Inc., is one of the world’s largest specialized employment staffing firms. Complainant has rights in the ROBERT HALF mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered June 2, 1981) See Amend. Compl. Ex. 3. Respondent’s <theroberthalf.com> is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “the” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.

2.    Respondent does not have rights or legitimate interests in the <theroberthalf.com> domain name. Respondent is not permitted or licensed to use Complainant’s ROBERT HALF mark, and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <theroberthalf.com> domain name to divert Internet users to Respondent’s website where Respondent hosts pay-per-click advertisements for third parties, some of which compete directly with Complainant’s business.

3.    Respondent has registered and used the <theroberthalf.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements to third party websites that compete with Complainant. Moreover, Respondent had actual or constructive knowledge of Complainant’s ROBERT HALF mark prior to registering and subsequently using the <theroberthalf.com> domain name.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <theroberthalf.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark.

2.    Respondent does not have any rights or legitimate interests in the <theroberthalf.com> domain name.

3.    Respondent registered or used the <theroberthalf.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights to the ROBERT HALF mark based upon registration of the mark with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under 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)). Complainant provides  screenshots of the results of a TESS search of its USPTO registrations for the ROBERT HALF marks (e.g., Reg. No. 1,156,612, registered June 2, 1981) See Amend. Compl. Ex. 3. Therefore, the Panel finds that Complainant has rights in the ROBERT HALF mark per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <theroberthalf.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark as Respondent merely adds an article and a gTLD to the mark. Addition of generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); See also 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). Complainant argues Respondent merely adds the article “the”, and a “.com” gTLD to Complainant’s ROBERT HALF mark. The Panel agrees with Complainant and find that the <theroberthalf.com> domain name does not contain changes that would sufficiently distinguish it from the ROBERT HALF mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <theroberthalf.com> domain name as Respondent is not authorized to use Complainant’s ROBERT HALF mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name or use a complainant’s mark may support a finding that the respondent lacks rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information provided by Complainant identifies Respondent as “Jack Chang” See Amend. Compl. Ex. 1. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Additionally, Complainant argues that Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses the <theroberthalf.com> domain name to host webpages populated by pay-per-click hyperlinks to Complainant’s own website and/or third-party websites that compete directly with Complainant. Use of a confusingly similar website to host pay-per-click hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) & (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of Respondent’s resolving website that hosts hyperlinks that, in at least some instances, incorporate the ROBERT HALF mark, and relate to Complainant and its employment staffing business, and/or redirect Internet users to other companies offering competing services. See Amend. Compl. Ex. 2. Complainant presumes this is done for Respondent’s commercial gain through receipt of click-through-fees. The Panel agrees with Complainant that this use does not amount to a bona fide offering or goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and uses the <theroberthalf.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links can indicate bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). As previously mentioned, Complainant provides screenshots of Respondent’s resolving website that hosts hyperlinks that, in at least some instances, incorporate the ROBERT HALF mark, that relate to Complainant and its employment staffing business, and/or that redirect Internet users to other companies offering competing services; all presumably for Respondent’s commercial gain through receipt of click-through-fees. See Amend. Compl. Ex. 2. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).

 

Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s ROBERT HALF mark at the time it registered and subsequently used the <theroberthalf.com> domain name. While constructive notice of a complainant’s mark is insufficient to support a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant argues that due to the fame of the ROBERT HALF mark, and Respondent’s inclusion of Complainant’s ROBERT HALF mark in the disputed domain name, Respondent must have had actual knowledge. Consequently, the Panel finds Respondent had actual knowledge of Complainant’s rights in the ROBERT HALF mark prior to registration and thus constitutes bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <theroberthalf.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  August 15, 2018