Robert Half International, Inc. and
Robert Half Incorporated v. Ling Shun Shing
Claim
Number: FA0502000422286
Complainant is Robert Half International, Inc. and Robert Half Incorporated (“Complainant”), represented by Andrew Baum, of Darby and Darby P.C., 805 Third Avenue, New York, NY 10022.
Respondent is Ling Shun Shing (“Respondent”),
138 Yi Xue Yuan Road, Shanghai 200032, People’s Republic of China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <offficeteam.com>, registered with Nameking.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 February
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 17, 2005.
On
February 16, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <offficeteam.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.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
February 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 10, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@offficeteam.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
March 17, 2005, 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.” 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 <offficeteam.com>
domain name is confusingly similar to Complainant’s OFFICETEAM mark.
2. Respondent does not have any rights or
legitimate interests in the <offficeteam.com> domain name.
3. Respondent registered and used the <offficeteam.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant
Robert Half Incorporated is a wholly-owned subsidiary of Complainant Robert
Half International, Inc. (collectively “Complainant”). Complainant has provided
temporary specialized staffing services under the OFFICETEAM mark continuously
since June 2, 1991. Complainant, which operates more than 300 offices in North
America, Europe, and Australia, is the largest provider of specialized staffing
services in the world. During fiscal year 2004, Complainant’s total worldwide
revenues for services rendered under the OFFICETEAM mark exceeded $570,000,000.
Complainant has maintained a website at the <officeteam.com> domain name
since November 6, 1995. Complainant also holds numerous worldwide trademark
registrations for the OFFICETEAM mark, including U.S. Reg. No. 1,694,787 (issued
June 16, 1992), which is on the Principal Register of the United States Patent
and Trademark Office. Complainant has spent much time, money, and effort
advertising and promoting its OFFICETEAM mark in major newspapers around the
world.
Respondent
registered the <offficeteam.com> domain name on October 21, 2002.
The domain name resolves to a website that contains numerous links to
third-party websites that relate to miscellaneous services, including
employment services that compete with Complainant. Respondent is not licensed
or authorized to use Complainant’s mark for any purpose.
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.
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 has
established that it has rights in the OFFICETEAM mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1991. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that a respondent has the burden of refuting this assumption).
The <offficeteam.com> domain name is
confusingly similar to Complainant’s OFFICETEAM registered trademark because
the disputed domain name merely adds the letter “f” and the “.com” generic
top-level domain to the mark. The addition of a third “f” to Complainant’s
well-known mark is an obvious typographical error. The intentional misspelling
of a famous mark, a form of “typosquatting,” and the addition of a generic
top-level domain do not distinguish the domain name from the mark. Respondent’s
typosquatting results in a domain name that is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w” or the omission of periods or other such
generic typos do not change respondent’s infringement on a core trademark held
by the complainant); see also State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum
June 15, 2000) (finding that the domain name <statfarm.com> was
confusingly similar to the complainant’s STATE FARM mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) (finding the disputed domain name was a simple misspelling of
the complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <offficeteam.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain name. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the complainant to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name redirects unsuspecting Internet users to commercial
websites that offer products and services that are either unrelated to or in
competition with Complainant’s services. Respondent makes opportunistic use of
Complainant’s mark in order to capitalize on the goodwill and fame associated
with the OFFICETEAM moniker. Thus, Respondent fails to establish rights or
legitimate interests in the domain name under Policy ¶ 4(a)(ii). See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where the respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
complainant’s site to a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to the respondent’s competing
website through the use of the complainant’s mark).
No
evidence before the Panel suggests Respondent is commonly known by the <offficeteam.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain name is known as “Ling
Shun Shing” and is not known by the confusingly similar second-level domain
that infringes on Complainant’s OFFICETEAM mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus,
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”); see also
MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name GIRLS GON WILD
or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of a confusingly similar variation of Complainant’s famous OFFICETEAM
mark to ensnare unsuspecting Internet users. Respondent then redirects the
users to a website that provides links to various commercial websites. The
Panel infers that Respondent receives pay-per-click fees when Internet users
follow the links on its website. Respondent is profiting from the unauthorized
use of Complainant’s registered mark in its domain name. Such infringement is
what the Policy was intended to remedy and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a
respondent profits from its diversionary use of a complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer goods
and services that compete with Complainant. Respondent’s use of the <offficeteam.com> domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, a panel must look at the “totality
of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
addition of a single letter to Complainant’s well-known OFFICETEAM mark,
resulting in a domain name that is confusingly similar to the mark, is evidence
of bad faith registration and use of the disputed domain name. Respondent
diverts Internet users who accidentally mistype Complainant’s mark to competing
websites. The Panel finds that Respondent engaged in the practice of
typosquatting, which is strong evidence that Respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that the respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark. “Typosquatting, itself is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of the
complainant’s DERMALOGICA mark and stating
that ”[t]yposquatting itself is evidence of bad faith registration and use
pursuant to Policy 4(a)(iii)”).
Respondent’s
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s well-known mark, suggests that Respondent knew of
Complainant’s rights in the OFFICETEAM mark. Additionally, Complainant’s
trademark registration on the Principal Register of the United States Patent
and Trademark Office gave Respondent constructive notice of Complainant’s mark.
Moreover, the fact that Respondent’s website provides links to Complainant’s
competitors evidences Respondent’s knowledge of Complainant’s rights in the
mark. Thus, the Panel finds that Respondent chose the <offficeteam.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names
are so obviously connected with the Complainants that the use or registration
by anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <offficeteam.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 31, 2005
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