Robert Half International Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1801001769400
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <authorizemeroberthalf.com>, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2018; the Forum received payment on January 30, 2018.
On January 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <authorizemeroberthalf.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 February 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@authorizemeroberthalf.com. Also on February 7, 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.
A timely Response was received and determined to be complete on February 26, 2018.
An additional submission was received from Complainant and determined to be timely on February 28, 2018.
On February 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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, Robert Half International Inc., is the world’s largest specialized employment staffing firm. Complainant contends that the disputed domain name is confusingly similar to Complainant’s well-known ROBERT HALF marks, full business name, and domain name.
Complainant contends Respondent has no rights or legitimate interests to the disputed domain name because (i) Respondent is not commonly known by the disputed domain name or any derivation of the same; and (ii) Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods/services, nor does it constitute a non-commercial use or fair use of the disputed domain name.
Complainant also contends that the disputed domain name was registered and is being used in bad faith. Respondent registered the domain name with the intention of reselling it, as the website located at the disputed domain name welcomes Internet users to “Buy this domain.” See Compl. Exs. 2, 4, and 5. See Comp., Annex 1. Complainant contends that this evidence demonstrates that the disputed domain name is being offered for sale at $799, a substantial premium over Registrant’s out-of-pocket registration costs, presumably in hope of soliciting an offer from Complainant to buy the disputed domain name to prevent the infringement of its ROBERT HALF Marks, all in violation of UDRP Policy ¶ 4(b)(i).
B. Respondent
Respondent contends that it was unaware of Complainant or its marks. Upon learning of this matter and, pursuant to its business practices, Respondent stated it contacted Complainant to offer a voluntary transfer of the domain name at issue and Complainant declined the offer.
Respondent consents to transfer the domain name as noted above and requests that the Panel transfer the domain name without issuing a decision on the merits.
C. Additional Submissions
In its additional submission, Complainant contends that Respondent’s conduct establishes that Respondent is engaged in the business of cybersquatting. Complainant alleges that the purpose of Respondent’s consent-to-transfer approach is to limit the number of adverse rulings against it on the merits that can subsequently be used to demonstrate its pattern of bad faith.
Complainant stated that it prefers not to resolve this matter strictly by consent and reiterated its request for a decision on the merits.
Complainant’s mark ROBERT HALF was registered on June 2, 1981. Complainant has owned and operated the domain name <roberthalf.com> since at least as early as 1995. The disputed domain name, <authorizemeroberthalf.com>, was registered on December 18, 2017.
The disputed domain name is confusingly similar to Complainant’s ROBERT HALF mark. Respondent lacks rights or legitimate interests in the disputed domain name and Respondent registered and uses the domain names 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.
Complainant has shown that it has rights in the ROBERT HALF mark in connection with Complainant’s various professional staffing and consulting services (e.g. ROBERT HALF, Reg No. 1,156,612; RH ROBERT HALF & Design, 4,482,350; and ROBERT HALF TECHNOLOGY & Design, Reg. No. 4,527,042). In addition to its trademark registrations, Complainant has continuously and exclusively owned and operated the domain name <roberthalf.com> since at least 1995.
Respondent’s <authorizemeroberthalf.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic terms “authorize” and “me,” as well as the generic top-level-domain (“gTLD”) “.com” to Complainant’s ROBERT HALF mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of 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).
Respondent has no rights or legitimate interests in the disputed domain name.
First, it is undisputed that Respondent has never been commonly known by the disputed domain name.
Second, Respondent’s use of the disputed domain name, to offer links to services in direct competition with Complainant for presumably commercial gain through click-through-fees, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015)
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.
Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015). As noted above, Respondent displays a link stating “Buy this domain” on the resolving webpage.
In addition, the evidence indicates that Respondent registered the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name,” which constitutes bad faith. Policy Paragraph 4(b)(i).
Further, Respondent presented no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.
For these reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <authorizemeroberthalf.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: March 8, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page