Robert Half International Inc. v. zhihui Ren
Claim Number: FA2206002000373
Complainant is Robert Half International Inc. (“Complainant”), represented by Foley & Lardner LLP, New York, USA. Respondent is zhihui Ren (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalfonblog.com>, registered with DomainName Highway 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2022; the Forum received payment on June 15, 2022.
On June 27, 2022, DomainName Highway LLC confirmed by e-mail to the Forum that the <roberthalfonblog.com> domain name is registered with DomainName Highway LLC and that Respondent is the current registrant of the name. DomainName Highway LLC has verified that Respondent is bound by the DomainName Highway 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 June 29, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 19, 2022 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@roberthalfonblog.com. Also on June 29, 2022, the Chinese and English language 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 July 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings to be Chinese. However, the Panel has the discretion to decide, pursuant to UDRP Rule 11(a), that a different language would be more appropriate, taking into consideration the particular circumstances of the administrative proceeding.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s disputed domain name incorporates English characters and words therein, suggesting that Respondent is proficient in the English language. Further, Complainant submits it is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents into Chinese, the language of the registration agreement, which would have to be done if the proceeding were conducted in Chinese.
The Panel finds that pursuant to Rule 11(a) the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a California-based global human resource consultant. Complainant claims rights in the ROBERT HALF mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612 registered June 12, 1979). See Compl. Ex. 3. The disputed domain name <roberthalfonblog.com> is confusingly similar to the ROBERT HALF trademark as it wholly incorporates Complainant’s registered trademark and differs only through the addition of the generic or highly descriptive terms “on” and “blog” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <roberthalfonblog.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ROBERT HALF mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to host third-party pay-per-click advertisements. Furthermore, the disputed domain is used to host adult-oriented content.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to create a likelihood of confusion to benefit commercially by disrupting Complainant’s business. Respondent had actual and constructive knowledge of Complainant’s rights in the ROBERT HALF mark prior to registration of the disputed domain. Respondent also uses the disputed domain to host adult-oriented material.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global human resource consultant.
2. Complainant has established its rights in the ROBERT HALF mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612 registered June 12, 1979).
3. Respondent registered the disputed domain name on December 27, 2021.
4. Respondent uses the disputed domain name to host third-party pay-per-click advertisements and to host adult-oriented content.
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”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROBERT HALF mark. Complainant argues that Respondent’s <roberthalfonblog.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark because it wholly incorporates the mark, differing only through the addition of the words “on” and “blog” before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and a gTLD generally fails to distinguish a disputed domain name sufficiently 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). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ROBERT HALF mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s ROBERT HALF mark and to use it in its domain name adding only the words “on” and “blog” to the mark;
(b) Respondent registered the domain name on December 27, 2021;
(c) Respondent uses the disputed domain name to host third-party pay-per-click advertisements and to host adult-oriented content;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <roberthalfonblog.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the ROBERT HALF mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is 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 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 the respondent is not commonly known by the 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 [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain does not indicate that Respondent is known by the disputed domain name. See WHOIS Information. The Respondent is known as “zhihui Ren.” Id. Respondent was not given rights to use the ROBERT HALF mark nor was it commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and was not granted usage rights per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent’s use of the <roberthalfonblog.com> domain name does not qualify as a bona fide offering or legitimate noncommercial or fair use. Complainant submits that the domain name resolves to a webpage containing pay-per-click hyperlinks and advertisements. See Paris Decl. at ¶ 4; See also Compl. Ex. 2. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel also finds that Complainant has shown Respondent’s lack of a right or legitimate interest in the <roberthalfonblog.com> domain name;
(g) Complainant argues that Respondent’s website is used to host advertisements specifically of adult-oriented material. Usage of a disputed domain name to resolve to webpages featuring adult-oriented content has been found by previous panels to evidence a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Here Complainant provides screenshots of the disputed domain resolving to a webpage featuring adult-oriented material. See Paris Decl. at ¶ 4; See also Compl. Ex. 2. The Panel therefore finds that Respondent has no right or legitimate interest in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <roberhalfonblog.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain by creating a likelihood of confusion. Where the respondent uses a disputed domain name to pass itself off as a complainant, it is open to the Panel to find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) Complainant argues that a determination as to whether Respondent registered and uses the disputed domain name to attract Internet users to its own website for the purpose of commercial gain relies on the totality of the circumstances. Complainant points to the fact that Respondent incorporates fully the entirety of its registered mark and argues that the additional words “on blog” are likely to create confusion with one of its other legitimate services. Complainant argues that this is evidence that Respondent simply uses the disputed domain to pass itself off as Complainant. As the Panel agrees, it finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the ROBERT HALF mark at the time of registering the <roberthalfonblog.com> domain name. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. 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.”). The Panel will determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to the fame of its trademark registrations along with the fact that Respondent fully incorporates its registered mark in its domain name. The Panel further notes that Complainant provides citations to other cases in which prior panels have found ROBERT HALF to be a famous mark. See Compl. Pg. 12. As such, the Panel finds Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the disputed domain in bad faith because it is used to host adult-oriented material. Usage of a disputed domain to host adult-oriented material has been found by past panels to evidence bad faith registration and usage. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). Here, Complainant provides screenshots of the disputed domain resolving to a webpage on which adult-oriented links are hosted. See Compl. Ex. 2. The Panel therefore find further evidence of bad faith registration and use.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roberthalfonblog.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 26, 2022
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