Robert Half International Inc. v. OMAR MOODY / 1977
Claim Number: FA1503001610528
Complainant is Robert Half International Inc. (“Complainant”), represented by Andrew Baum of Foley & Lardner LLP, New York, USA. Respondent is OMAR MOODY / 1977 (“Respondent”), represented by Brian Distance, Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officeteamjobs.com>, registered with Enom, Inc.
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.
Mrs. Prathiba M. Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 20, 2015.
On March 23, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <officeteamjobs.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2015 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@officeteamjobs.com. Also on March 25, 2015, 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.
A timely Response was received and determined to be complete on May 4, 2015.
Complainant submitted a timely Additional Submission that was received and determined to be complete on May 8, 2015.
On May 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mrs. Prathiba M. Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is famous and well known for employment and staffing services and has more than 400 specialized consulting and staffing locations worldwide. During the fiscal year 2012, Complainant’s worldwide revenue was approximately US $4.7 billion. Complainant further states that it has appeared on FORTUNE Magazine’s Most Admired lists for 15 years and has debuted at number-one in the category of Temporary Help.
Complainant submits that ‘OFFICETEAM’ is one of its principal divisions and that Complainant has provided specialized staffing services under the ‘OFFICETEAM’ mark continuously since June 2, 1991. In support of its claims, Complainant has relied upon Robert Half Int’l Inc v. Ling Shun Shing, FA 422286 (Nat. Arb. Forum Mar. 31, 2005). The total worldwide revenue of the Complainant during the fiscal years 2003-2014 has exceeded US $ 8 billion.
Complainant owns the <officeteam.com> domain name since November 6, 1995; which provides both prospective employees and employers a wealth of information about the officeteam services, procedure and contact information. Complainant has provided copies of a WHOIS search, as Exhibit 4, which clearly states that the Complainant to be the registered proprietor of the <officeteam.com> domain name in support of the same.
Complainant has trademark registrations for the mark ‘OFFICETEAM’, alone or as part of a composite mark, in 26 jurisdictions and that these registrations establish Complainant’s rights in the ‘OFFICETEAM’ marks. Complainant has spent an enormous amount of time, money and effort in promoting and advertising ‘OFFICETEAM’ marks and in developing its website <officeteam.com>. In support of its contentions, Complainant has cited Ling, FA 422286 (supra), which held that Complainant has established its rights in the ‘OFFICETEAM’ mark through registrations with the USPTO and through continuous use of the mark since 1991.
Complainant alleges that Respondent registered the domain name <officeteamjobs.com> (“disputed domain name”) on or about December 23, 2014 and Complainant became aware of the same on January 9, 2015. Thereafter, Complainant attempted a conciliatory approach via email dated March 4, 2015 wherein Complainant informed Respondent of Complainant’s rights in the U.S Trademark Registration No. 1,694,787 for ‘OFFICETEAM’ and demanded that Respondent agree to transfer the disputed domain name by a specific date. Complainant submits that Respondent, via email, stated that he has “purchased the domain legally and legitimately from a major hosting site” and invited Complainant to submit an offer to purchase the disputed domain name. Vide email dated March 6, 2015, Respondent offered to sell the disputed domain name for $10,000.
Complainant submits that the disputed domain name is confusingly similar and is likely to cause confusion amongst consumers who are likely to be diverted to the Respondent’s website. Complainant submits that Complainant’s ‘OFFICETEAM’ mark has been included in the disputed domain name in its entirety and also includes the term ‘jobs’ which is the exact area of business of Complainant. Complainant further submits that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not making legitimate non-commercial or fair use of the domain name. Further, Respondent cannot show bona fide use of the same as the domain name has no other meaning other than as an appropriation of the ‘OFFICETEAM’ marks. Furthermore, Complainant submits that as Complainant’s ‘OFFICETEAM’ mark is well known, it is inconceivable that Respondent was unaware of Complainant’s trademark. In support of the aforesaid contention, Complainant has provided a number of panel decisions that hold that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.
B. Respondent
Respondent submits that the <officeteamjobs.com> domain name was registered on or about December 23, 2014, and that it went live on January 5, 2015. Respondent further submits that he is in the business of locating gainful employment for individuals within the customer service industry.
Respondent states that it received a written notice of the Complaint on March 25, 2015.
Respondent is not denying the communication between itself and Complainant for the period March 4, 2015 to March 6, 2015. Further, Respondent submits that after the filing of the Complaint on March 20, 2015 against Respondent, Respondent’s website <officeteamjobs.com> was taken down. Therefore, since March 20, 2015; Respondent has been prevented from doing any business.
Respondent submits that on April 30, 2015, Respondent again offered to sell the disputed domain name to Complainant for $3,000, which was a reflection of the work and goodwill associated with and resulting from Respondent’s efforts. Complainant however, did not accept the offer and did not propose a counter offer.
Respondent submits that the disputed domain name is not identical/confusingly similar to the Complainant’s domain name <officeteam.com>. That Complainant’s trademark is merely a joining of two generic terms “office” and “team” and that Respondent has added another generic term “jobs” to avoid confusion. In support of this contention, Respondent has provided a UDRP decision, Michele Moore, FA 1430021, wherein it was held that there can be “no finding of confusing similar domain name where the domain name adds a generic word to a weak service mark comprising of two generic words.”
Respondent states that he possesses rights and legitimate interests as to the domain name <officeteamjobs> pursuant to UDRP Policy since Respondent, since registration, has utilized the disputed domain name in connection with a bona fide offering of services pursuant to UDRP policy, para 4(c)(i).
Furthermore, Respondent states that Complainant’s allegations of bad faith are insufficient to establish a claim under Policy 4(a)(iii). Respondent submits that the disputed domain name was created from Respondent’s unique experiences gained from participating in collegiate sports (TEAM) and the potential application of the lessons learned from these experiences to finding employment for individuals (JOBS) in the workplace (OFFICE). Respondent submits that he has created his own goodwill and reputation in the marketplace.
C. Additional Submissions by the Complainant
Complainant states that Respondent has not provided any supporting documents depicting the fair use of the disputed domain name. Complainant further states that use of a confusingly similar domain name to market and sell services in direct competition with Complainant does not constitute a bona fide offering of goods and services. Complainant submits that there is nothing generic or descriptive about the particular combinations of words which make up the trade mark ‘OFFICETEAM’.
Complainant further reiterates that Respondent has not demonstrated that he has any rights or legitimate interests in the disputed domain name under UDRP and the same is being used by Respondent to direct Internet users to Respondent’s website. Complainant submits that Respondent has not provided any evidence that he is commonly known by the disputed domain name. Moreover, Complainant has clearly and unequivocally stated that Respondent is wrong in claiming that “current law holds that offer to sell domain names which exceed the out-of-pocket costs relating to a Respondent’s domain name do not demonstrate bad faith under policy 4(a)(iii).” Complainant has distinguished the three cases provided by Respondent in support of his contention.
From the documents filed, it clearly appears that Complainant is famous and well-known for employment and staffing services, and has more than 400 specialized consulting and staffing locations worldwide. One of Complainant’s principal divisions is ‘OFFICETEAM’ under whose mark Complainant has provided specialized staffing services continuously since June 2, 1991. Complainant has established that it owns the ‘OFFICETEAM’ mark through its registration with the USPTO, registration no. 1,694,787; registered on June 16, 1992 along with other registrations, including a European Community Trademark No. 30551 for ‘OFFICETEAM’. Complainant has owned the domain name <officeteam.com> since November 6, 1995. Conversely, Respondent’s domain name <officeteamjobs.com> was registered on or about December 23, 2014 and the said website went live on January 5, 2015. It is an established fact that Respondent is purporting to be in the same business as that of Complainant and that there is a strong likelihood of confusion.
Complainant attempted a conciliatory approach via email dated March 4, 2015 wherein Complainant informed Respondent of Complainant’s rights in the U.S Trademark Registration No. 1,694,787 for ‘OFFICETEAM’ and demanded that Respondent agree to transfer the disputed domain name by a specific date. The Respondent, via email, stated that he has “purchased the domain legally and legitimately from a major hosting site” and invited Complainant to submit an offer to purchase the disputed domain name. In an email dated March 6, 2015, the Respondent offered to sell the disputed domain name for $10,000. On April 30, 2015, Respondent again offered to sell the disputed domain name to Complainant for $3,000, alleging the same to be reflective of the work and goodwill associated with and resulting from Respondent’s efforts. Complainant, however, did not accept the offer and did not propose a counter offer.
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.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel finds that Complainant has made out a case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, para 4(a)(ii). Complainant asserts that Respondent is not commonly known by the disputed domain name and the same is not refuted by Respondent. Complainant further states that Respondent has no connection or affiliation with Complainant and Complainant has not given Respondent permission to use the disputed domain name. The WHOIS search conducted by Complainant clearly shows that Complainant registered its domain name <officeteam.com> in 1995, whereas Respondent registered the disputed domain name in 2014, listing “Omar Moody” as the registrant. Respondent has not provided any documentary evidence showing that it has been using the disputed domain name to acquire any goodwill that can be considered as superior to that of Complainant. In fact Complainant’s evidence is overwhelming.
It is further found that Respondent is not making legitimate non-commercial or fair use of the disputed domain name as is evident from Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services. Exhibit 6 provided by Complainant shows that Respondent is attempting to make false association with Complainant. It is established that Respondent is using the disputed domain name merely to divert consumers, and Complainant’s business to Respondents.
The Panel finds that the Policy ¶ 4(a)(ii) has been satisfied.
The mala fide intent of Respondent is patently evident in light of the fact that Respondent has offered to sell the disputed domain name to the Complainant is excess of out-of-pocket costs, which constitutes bad faith. Respondent is not disputing the fact that in its email dated March 6, 2015, it offered to sell Complainant the disputed domain name for $10,000 and thereafter for $3,000 on April 30, 2015. Emails/correspondence attached by Complainant are not disputed by Respondent. Complainant submits that Respondent purchased the disputed domain name for approx $12.50 per year plus a $195.00 one-time enrollment fee. The Panel finds that Respondent’s offer to sell the disputed domain name for the high price of $10,000 is clear evidence of Respondent’s use of the disputed domain name in bad faith. This finding has been reinforced by Respondent’s email dated April 30, 2015, wherein Respondent offers to sell the domain name to Complainant for $3,000. The Panel agrees with the arguments put forth by Complainant and finds that Complainant, in its additional pleadings, has sufficiently distinguished the cases relied upon by Respondent. The Panel places emphasis on the facts that Respondent registered the domain name only in 2014, whereas Complainant is the registered owner of the trademark ‘OFFICETEAM’ since 1991 and that the disputed domain name has not been used for such an extended period of time so as to generate goodwill and reputation in favour of Respondent.
The Panel finds that the use of the disputed domain name by Respondent is merely to divert the traffic from Complainant’s website to Respondent or to make illegitimate monetary gain by selling the same. It is found that it is not probable that Respondent did not have any knowledge of Complainant’s registered domain name as the same is well established and has been in use since 1995. Furthermore, Complainant has advertised and promoted its trademark on a global scale. Therefore, the Panel finds that Respondent did have actual/constructive knowledge of Complainant’s domain name. In Victoria’s Secret Stores Brand Mgmt., Inc. v. Micheal Bach, FA 1426668, it was held that “although Complainant has not submitted evidence indicating actual knowledge by the Respondent of its rights in the trademark, the Panel finds that, due to the fame of the Complainant’s [VICTORIA SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy, para 4(a)(iii).”
Furthermore, the Panel finds that Respondent, if allowed to use the impugned domain name, may indulge in acts of phishing as Respondent is attempting to gain personal information from the customers who are viewing/accessing Respondent’s website, thinking it is of Complainant’s. The Panel further finds that as Respondent is posing itself to be the direct competitor of Complainant, use of an identical/confusingly similar is further evidence of its bad faith.
The Panel finds that the Policy, para 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 <officeteamjobs.com> domain name be TRANSFERRED from the Respondent to the Complainant.
Mrs. Prathiba M. Singh, Panelist
Dated: June 1, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page