Robert Half International Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1909001864138
Complainant is Robert Half International Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, California, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com>, registered with Dynadot, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 26, 2019; the Forum received payment September 27, 2019.
On September 27, 2019, Dynadot, LLC confirmed by e-mail to the Forum that Respondent registered the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC verified that Respondent is bound by the Dynadot, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2019, 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@roberthslf.com, postmaster@roberthakf.com, postmaster@robertalf.com, postmaster@roerthalf.com, postmaster@roberthlf.com. Also on September 30, 2019, the Forum transmitted the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, to Respondent by post and fax, and 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 October 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.
A. Complainant’s Allegations in this Proceeding:
Complainant is one of the world’s largest specialized employment staffing firms. Complainant has rights in the ROBERT HALF mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered Jun. 2, 1981). See Compl. Annex B, Olesky Decl. at Ex. 11. Respondent’s <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names are confusingly similar to Complainant’s ROBERT HALF mark as each incorporates the mark, merely including a misspelling of the mark (substituting the letters “s” for “a,” “k” and deleting the letters “h,” “b,” and “a”), and each incorporates a “.com” generic top-level domain (“gTLD”).
Respondent registered and uses the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names in bad faith. Respondent is not licensed or authorized to use Complainant’s ROBERT HALF mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain names resolve to websites hosting generic hyperlinks to competing recruiting and staffing services.
Respondent registered and uses the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain names where it features competing pay-per-click links. Furthermore, Respondent engaged in typoquatting when it registered the disputed domain names. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the ROBERT HALF mark prior to registering the disputed domain names.
B. Respondent’s Contentions in Response in this Proceeding:
Respondent failed to submit a Response. The Panel notes that the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names were all registered August 14, 2019. See Compl. annex B, Oleksy Decl. at Exs. 1-5.
Complainant established rights to and legitimate interests in the disputed domain names containing various misspelled versions of Complainant’s protected mark.
Respondent registered the disputed domain names using Complainant’s protected mark and the disputed domain name is confusingly similar to that mark.
Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected mark.
Respondent registered and used the disputed 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar:
Complainant claims rights in the ROBERT HALF mark is based upon registration of the mark with the USPTO (e.g., Reg. No. 1,156,612, registered Jun. 2, 1981). See Compl. Annex B, Olesky Decl. at Ex. 11. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the ROBERT HALF mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names are confusingly similar to the ROBERT HALF mark, as each name incorporates the mark, merely including a misspelling of the mark (substituting the letters “s” for “a” and “k” for “l,” and deleting the letters “h,” “b,” and “a”), and each incorporates a “.com” gTLD. Such changes do not distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”); see also Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). The Panel may therefore finds that the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names are confusingly similar to the ROBERT HALF mark pursuant to a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered the disputed domain names containing Complainant’s protected mark and that the domain names are confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN 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 of proof shifts to Respondent to show it does have such 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 <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names, as Respondent is not commonly known by the disputed domain names and Complainant never authorized Respondent to use the ROBERT HALF mark in any way. Where no response is filed, the Panel may use WHOIS information to support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain names as “Super Privacy Service LTD c/o Dynadot,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use that shows rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends the domain name resolves to a website displaying only pay-per-click links, some of which send users to competitor’s websites. See Compl. Annex B, Olesksy Decl. at Exs. 6-10. The Panel therefore finds that Respondent does not have rights or legitimate interests in the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain names containing various misspelled versions of Complainant’s
protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant also contends that Respondent’s bad faith is indicated by its use of the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names to link to third party websites, some of which compete with Complainant’s business. Use of a domain name in the name of another to resolve to a page of third-party links, including competitive links, demonstrates a respondent’s bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. See Compl. Annex B, Olesksy Decl. at Exs. 6-10. The Panel therefore finds that Respondent registered and used the domain names in bad faith under a Policy ¶ 4(b)(iv) analysis.
Complainant further contends that the registration of the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names constitute typosquatting, which is further evidence of bad faith. Registration of a confusingly similar domain name that contains common misspelling of a complainant’s mark suggests bad faith registration under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). The Panel recalls that Complainant argues that each domain name contains a misspelling of the mark (substituting the letters “s” for “a” and “k” for “l,” and deleting the letters “h,” “b,” and “a”). Complainant further argues that the letters “s” and “a” and “k” and “l” are close to each other on a typical keyboard. The Panel therefore finds that Respondent’s actions constitute typosquatting, thereby demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that given the fame and notoriety of Complainant's ROBERT HALF mark, it is inconceivable that Respondent could have registered the <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names without actual and constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name series that uses Complainant’s mark in a series of misspelled forms; the opportunism is open and obvious; actual knowledge is shown in support of findings that Respondent here acted in bad faith under Policy ¶ 4(a)(iii) in registering these domain names and then using them so blatantly. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further argues that Respondent’s registration of multiple domain names, each containing a misspelling of the ROBERT HALF mark and redirecting users to websites that feature competing links indicates actual knowledge as well and the Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the names in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names containing misspelled versions of Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <roberthslf.com>, <roberthakf.com>, <robertalf.com>, <roerthalf.com>, and <roberthlf.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 4, 2019
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