Robert Half International Inc. v. Brandon Bomberg / Twin Cities Holdings
Claim Number: FA2002001882210
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is Brandon Bomberg / Twin Cities Holdings (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <robert-half.club>, <robert-half.online>, <robert-half.site>, <robert-half.space>, <robert-half.website>, <robert-half.xyz>, <roberthalf.online>, <roberthalf.site>, and <roberthalf.space>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2020; the Forum received payment on February 7, 2020.
On February 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <robert-half.club>, <robert-half.online>, <robert-half.site>, <robert-half.space>, <robert-half.website>, <robert-half.xyz>, <roberthalf.online>, <roberthalf.site>, and <roberthalf.space> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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@robert-half.club, postmaster@robert-half.online, postmaster@robert-half.site, postmaster@robert-half.space, postmaster@robert-half.website, postmaster@robert-half.xyz, postmaster@roberthalf.online, postmaster@roberthalf.site, postmaster@roberthalf.space. Also on February 11, 2020, 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 March 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Robert Half International Inc., is a specialized employment staffing firm. Complainant has rights in the ROBERT HALF mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered June 2, 1981). Respondent’s <robert-half.club>, <robert-half.online>, <robert-half.site>, <robert-half.space>, <robert-half.website>, <robert-half.xyz>, <roberthalf.online>, <roberthalf.site>, and <roberthalf.space> domain names (“Disputed Domain Names”) are confusingly similar to Complainant’s mark because they incorporate Complainant’s entire ROBERT HALF mark and simply add hyphens and generic top-level domains (“gTLDs”).
Respondent does not have rights or legitimate interests in the Disputed Domain Names. Respondent is not authorized to use Complainant’s ROBERT HALF mark and is not commonly known by any of the Disputed Domain Names. Additionally, Respondent doesn’t use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Disputed Domain Names to display parked pages.
Respondent registered and uses the Disputed Domain Names in bad faith because Respondent inactively holds the domains. Additionally, Respondent’s domain name registrations constitute typosquatting. Further, Respondent has actual knowledge of Complainant’s rights in the ROBERT HALF mark prior to the registration of the Disputed Domain Names
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Robert Half International Inc. (“Complainant”), of Menlo Park, CA, USA. Complainant is the owner of domestic and international registrations for the mark ROBERT HALF and variations thereof constituting the Robert Half family of marks. Complainant has continuously used its mark since at least as early as 1948 in connection with its provision of staffing and employment agency services.
Respondent is Brandon Bomberg / Twin Cities Holdings (“Respondent”), of Minneapolis, MN, USA. Respondent’s registrar’s address appears to be indicated as Phoenix, AZ, USA. The Panel notes that the Disputed Domain Names were all registered on or about December 15, 2019.
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 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”).
Complainant asserts rights in the ROBERT HALF mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration of the ROBERT HALF mark with the USPTO (e.g., Reg. No. 1,156,612, registered June 2, 1981). The Panel here finds that Complainant has rights in the ROBERT HALF mark under Policy ¶ 4(a)(i).
Respondent’s Disputed Domain Names are confusingly similar to Complainant’s mark because they incorporate Complainant’s entire ROBERT HALF mark and simply add a hyphen and/or a gTLD. Hyphens and gTLDs are irrelevant for the purposes of Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Complainant argues that (3) of the Subject Domain Names, namely, <roberthalf.online>, <roberthalf.site>, and <roberthalf.space>, incorporate the entire ROBERT HALF mark and merely add top level domain extensions. In addition, (6) of the Subject Domain Names, namely, <robert-half.club>, < robert-half.online>, <robert-half.site>, <robert-half.space>, < robert-half.website>, and <robert-half.xyz> , incorporate the entire ROBERT HALF mark and merely add a hyphen between “Robert” and “Half” and a top level domain extension. Complainant asserts these additions are completely inadequate to distinguish the Subject Domain Names from the ROBERT HALF marks. The Panel here finds that the Disputed Domain Names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the Disputed Domain Names because Respondent is not authorized to use Complainant’s ROBERT HALF mark and is not commonly known by any of the Disputed Domain Names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. 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 of record lists “Brandon Bomberg” as the registrant and no information suggest that Complainant has authorized Respondent to use the ROBERT HALF mark in any way. The Panel here finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead uses the domain to display parked pages. Use of a confusingly similar domain name to display parked webpages may not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides a screenshot of the resolving webpages at the Disputed Domain Names and argues that resolution to parked landing pages for the registrar is not a bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel here finds that Respondent lacks rights and legitimate interests in the Disputed Domain Names under Policy ¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
The Panel notes that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel here finds that Complainant’s Policy ¶ 4(a)(iii) arguments as outlined below are sufficient to establish bad faith.
Complainant claims that Respondent registered and uses the Disputed Domain Names in bad faith because Respondent inactively holds the domain names. Failure to make active use of a disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the resolving webpages and argues that use of the domain names as parked landing pages for the registrar qualifies as an inactive use. The Panel finds Complainant’s arguments and proofs support a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also claims that Respondent’s domain name registrations constitute typosquatting. Typosquatting may act as independent evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)); see also Robert Half Int’l Inc. v. Cooper, FA1903001834798 (Forum Apr. 18, 2019) (stating that “Respondents who capitalize on common typing errors engage in bad faith registration under [the] Policy” and finding that the changes between the disputed domain name and complainant’s marks amounted to typosquatting and demonstrated bad faith under the Policy). Complainant argues that Respondent’s addition of a hyphen to the ROBERT HALF mark for use in the in six of the Disputed Domain Names constitutes typosquatting. The Panel here finds Complainant provides sufficient evidence of typosquatting by Respondent, and as such further support for a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent has actual knowledge of Complainant’s rights in the ROBERT HALF mark. While constructive notice of a complainant’s rights in a mark is insufficient to show bad faith, actual notice can be evidence of bad faith registration and use. 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 claims that it is inconceivable that Respondent did not have actual knowledge of Complainant’s mark based on the totality of circumstances surrounding the use and registration, especially considering that the Subject Domain Names incorporate the entire ROBERT HALF mark with minor and inconsequential additions and that they were registered more than seventy (70) years after Complainant first used the ROBERT HALF mark. The Panel here finds sufficient evidence to establish Respondent had actual knowledge of Complainant’s mark and thus registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the<robert-half.club>, <robert-half.online>, <robert-half.site>, <robert-half.space>, <robert-half.website>, <robert-half.xyz>, <roberthalf.online>, <roberthalf.site>, and <roberthalf.space> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 20, 2020
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