AB Staffing Solutions, LLC v. Andrew Boyanowski
Claim Number: FA2208002008215
Complainant is AB Staffing Solutions, LLC (“Complainant”), represented by David S. Gingras of Gingras Law Office, PLLC, Arizona, USA. Respondent is Andrew Boyanowski (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ab-staffing.com>, registered with FastDomain Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2022; the Forum received payment on August 12, 2022.
On August 15, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the <ab-staffing.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 August 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@ab-staffing.com. Also on August 15, 2022, 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 September 6, 2022.
On September 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <ab-staffing.com> domain name is confusingly similar to Complainant’s AB STAFFING SOLUTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <<ab-staffing.com> domain name.
3. Respondent registered and uses the <ab-staffing.com> domain name in bad faith.
B. Respondent
1. Respondent’s <ab-staffing.com> domain name is not confusingly similar to Complainant’s AB STAFFING SOLUTIONS mark because it includes a hyphen.
2. Respondent has rights and legitimate interests in the <ab-staffing.com> domain name because he is using it to advertise consulting services and the resolving webpage bears no resemblance to Complainant’s website.
3. Due to the above, Respondent did not register and does not use the <ab-staffing.com> domain name in bad faith.
A. Complainant’s Additional Submission
1. The hyphen in Respondent’s <ab-staffing.com> domain name is irrelevant in determining confusingly similarity to Complainant’s AB STAFFING SOLUTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <ab-staffing.com> domain name because he uses it to compete with Complainant.
3. Due to the above, Respondent registered and uses the <ab-staffing.com> domain name in bad faith.
B. Respondent
1. Respondent did not register and does not use the <ab-staffing.com> domain name in bad faith because some of his contracts are not staffing positions, and because he is not one of the large competitors of Complainant.
Complainant, AB Staffing Solutions, LLC, offers staffing solutions related to healthcare. Complainant has rights in the AB STAFFING SOLUTIONS mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5, 501,832, registered June 26, 2018). Complainant operates its business using <abstaffing.com>.
Respondent, Andrew Boyanowski, registered the <ab-staffing.com> domain name on March 28, 2020, and uses it to compete with Complainant.
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.
The Panel finds that Complainant has rights in the AB STAFFING SOLUTIONS mark based on registration with the USPTO. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”)
Respondent’s <ab-staffing.com> domain name uses the dominant portion of Complainant’s mark, namely “AB STAFFING,” and merely adds a hyphen and the same gTLD that Complainant uses, “.com.” It is well-settled that the addition of a gTLD and a hyphen does not distinguish a disputed domain name from a mark under 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.”) It is also firmly established that adding or removing a generic or descriptive word in a disputed domain name does not help to make the domain name distinct. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <ab-staffing.com> domain name is confusingly similar to Complainant’s AB STAFFING SOLUTIONS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant contends that Respondent lacks rights and legitimate interests in the <ab-staffing.com> 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 AB STAFFING mark. The WHOIS information for the disputed domain name lists the registrant as “Andrew Boyanowski.” There is no evidence in the record to support the notion that Respondent is known by the disputed domain name, other than a recently-created webpage that purportedly offers “AB Staffing & Consulting” services that compete with those offered by Complainant. The Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a template webpage that offers competing services and attempts to pass Respondent off as affiliated with Complainant. Using a disputed domain name to redirect users to competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides evidence that the disputed domain name resolves to a webpage entitled “AB Staffing & Consulting,” offering services that directly compete with those offered by Complainant. Respondent’s contention that it is not competing with Complainant is completely without merit, as the very name of Respondent’s webpage belies. Respondent’s contention that it offers “consulting and solutions to laboratories only” is controverted by the evidence in the record and, even if true, does not mitigate Respondent’s attempt to divert users to its webpage. Whether Respondent’s services are slightly different than Complainant’s, and whether Respondent is large or small, using a registered trademark in a disputed domain name to capture users is simply not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus the Panel finds that Respondent has no rights under Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <ab-staffing.com> domain name in bad faith because Respondent disrupts Complainant’s business. Using a disputed domain name to redirect consumers to competing goods or services evinces bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied 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 <ab-staffing.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 13, 2022
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