Robert Half International Inc. v. Name Redacted
Claim Number: FA2010001916079
Complainant is Robert Half International Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, United States. Respondent is Name Redacted (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalf.network>, registered with NameCheap, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2020; the Forum received payment on October 8, 2020.
On October 7, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <roberthalf.network> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@roberthalf.network. Also on October 20, 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.
On approximately October 20, 2020, an email was submitted to the Forum from the Registrant of the disputed domain name.
On November 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a prominent employment staffing firm. Complainant has rights in the trademark ROBERT HALF through its use in commerce since 1948 and its various registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and the European Union Intellectual Property Office (“EUIPO”) dating back to 1981. Respondent’s <roberthalf.network> domain name, registered on September 12, 2020, is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ROBERT HALF mark in its entirety and adds the “.network” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <roberthalf.network > domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ROBERT HALF mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or make a legitimate noncommercial or fair use thereof. Instead, the disputed domain name automatically redirects users to Complainant’s own web page and is used in connection with an email phishing scam in which Respondent seeks to impersonate Complainant.
Respondent registered and uses the <roberthalf.network > domain name in bad faith. Respondent uses the disputed domain name to further a fraudulent phishing scam. Further, Respondent automatically redirects the disputed domain name to Complainants own webpage. Finally, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the ROBERT HALF mark.
B. Respondent
The Registrant of the disputed domain name submitted an email in this proceeding stating that its registrar account had been hacked, that it had no knowledge of the <roberthalf.network> domain name, and that it has asked its registrar to suspend, delete and discard the disputed domain name.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.
In view of Respondent's failure to submit a substantive 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 and supported 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 UMass Memorial HealthAlliance – Clinton Hospital v. Privacy.co.com Privacy ID# 1216460 / Savvy Investments, LLC Privacy ID# 1216460, FA 1892419 (Forum May 18, 2020) (“Complainant in the present case has provided no evidence to support its assertion that it has common law rights in the descriptive terms URGENT CARE LEOMINSTER in connection with providing medical and health care services.”), citing 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 the registration with the USPTO and the EUIPO. Registration of a mark with a national trademark authority is a valid showing of rights in a 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).”) Since Complainant provides screenshots from the USPTO and the EUIPO websites evidencing its registration of the ROBERT HALF mark, the Panel finds that the Complainant has satisfied its burden of proof to show rights in the mark and, thus, standing to bring the present claim under Policy ¶ 4(a)(i).
Next, Complinant argues that the <roberthalf.network> domain name is virtually identical and confusingly similar to Complainant’s ROBERT HALF mark as it contains the mark in its entirety and merely adds the “.network” gTLD. The addition of a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). As the term “network” does not distinguish the disputed domain name from Complainant’s mark, the Panel finds that the disputed domain name is confusingly similar thereto per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <roberthalf.network> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ROBERT HALF mark. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists a registrant name that bears no resemblance to the disputed domain name and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or to make a legitimate noncommercial or fair use thereof as the disputed domain name redirects users to Complainant’s own web page. Where a respondent redirects users to a complainant’s legitimate site, Panels have found that it fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Here, the Complainant provides a screenshot of the disputed domain name noting that it redirects to Complainant’s own <roberthalf.co.uk> website. On this evidence the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or to make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent uses the <roberthalf.network> domain name to further a fraudulent phishing scam by sending emails using the disputed domain name and having the domain name automatically redirect users to Complainant’s own website. Use of a disputed domain name in connection with phishing is clearly not bona fide, fair, noncommercial, or otherwise indicative of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”) See also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”) Here, Complainant claims that Respondent impersonates Complainant through an email address associated with the disputed domain name to solicit information and discounted pricing quotes for job posting and resume searching. Complainant provides copies of emails sent from an email address associated with the disputed domain name. This email address uses the name of an individual in an attempt to create the impression that it originates with one of Complainant’s employees (though no employee with this name actually exists). Further, some of these emails include a signature block that displays the name “Robert Half® Recruitment Agency” followed by Complainant’s actual London address. Finally, as noted above, when input into a web browser the disputed domain name automatically redirects users to Complainant’s own website, presumably in an effort to further disguise the impersonating emails as actually coming from Complainant. Based upon the evidence presented by Complainant and the lack of any defense or explanation of this activity by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the <roberthalf.network> domain name with actual and constructive knowledge of Complainant’s rights in the ROBERT HALF mark. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP Panels most often decline to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle of law. See UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") The Panel does agree with Complainant, however, that, based upon its phishing activities, Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is an adequate foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii). 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.”) Impersonating a brand owner in emails, in particular, can demonstrate actual knowledge of an asserted trademark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”) Complainant claims that Respondent clearly had actual knowledge of the ROBERT HALF mark due to its use of the domain name to impersonate Complainant. On this basis, the Panel finds that actual knowledge is evident here.
Next, Complainant argues that Respondent registered and uses the <roberthalf.network> domain name in bad faith because Respondent disrupts Complainant’s business by impersonating an employee of Complainant and sending fraudulent emails seeking to gain the trust of the recipient for further illicit purposes. Use of a disputed domain name in this manner can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)); See also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Of course, Policy ¶ 4(b)(iii) requires that any disruption of business relate to a “competitor”, however, Panels have chosen to interpret this word rather broadly. See Kijiji International Limited Corporation v. Sumit Ghosh / Facedominator LLC, FA 1909542 (Forum Sep. 17, 2020) citing Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). As previously noted, Complainant provides examples of Respondent’s allegedly fraudulent emails in which it seeks to impersonate an employee of Complainant’s in an effort to gain the trust of the recipient. Further, it automatically redirects the <roberthalf.network> domain name to Complainant’s own <roberthalf.co.uk> website to assist its deception. As Respondent’s phishing efforts are clearly disruptive to Complainant’s business, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent’s redirection of traffic to complainant’s own website constitutes bad faith. Per Policy ¶ 4(a)(iii), redirection of Internet users to a complainant’s own legitimate website may qualify as bad faith use. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use). Complainant here provides evidence that the disputed domain name redirects to Complainant’s websites. The Panel finds that this also supports a finding of bad faith per Policy ¶ 4(a)(iii).
Finally, the Panel notes that using false or misleading WHOIS information may serve as supporting evidence of bad faith under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”) The Panel notes that the Registrant of the disputed domain name, i.e., the individual actually named in the WHOIS record, appears to be a victim of identity theft by Respondent who apparently hacked into the registrar account. The Registrant submitted an email to the Forum stating that “Hackers maliciously gained access to our account at namecheap.com, created domains and email accounts for spamming and fraudulent activities.” It goes on to say that “we had no knowledge that such domain/email existed and/or activities were going on” and “[w]e had no knowledge about the domain roberthalf.network, we did not create this domain, we did not know that this domain was created in our account at namecheap.com.” To support its claim of having been hacked, the Registrant has provided screenshots of correspondence with its Registrar referencing such hacking and seeking to suspend and delete the disputed domain name. From the submitted evidence, it appears to the Panel that Respondent used the name and contact information of an unsuspecting person in the WHOIS record of the disputed domain name.[i] Therefore, the Panel finds that bad faith registration and use is further supported by Respondent using false WHOIS information to register the disputed domain name under 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 <roberthalf.network> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 19, 2020
[i] For this reason, and to preserve the privacy of an innocent party, the Panel has determined that the name of the party mentioned in the WHOIS record for the disputed domain name be redacted from this decision.
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