Robert Half International Inc. v. April House
Claim Number: FA2212002025243
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York. Respondent is April House (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalf.app>, registered with Google 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on December 23, 2022; Forum received payment on December 23, 2022.
On December 26, 2022, Google LLC confirmed by e-mail to Forum that the <roberthalf.app> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 December 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2023 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.app. Also on December 29, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant is a California-based global human resources consulting firm. Complainant claims rights in the ROBERT HALF trademark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered June 2, 1981). The disputed domain name <roberthalf.app> is confusingly similar because it differs only through the addition of the “.app” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ROBERT HALF trademark in any way. Additionally, Respondent fails to use the disputed domain name in connection with making a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith. Respondent fails to make active use of the disputed domain name. Furthermore, Respondent had actual and/or constructive knowledge of Complainant’s rights in the ROBERT HALF trademark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,156,612 ROBERT HALF (word), registered June 2, 1981 for services in Intl Class 35;
No. 4,482,350 RH ROBERT HALF (fig.), registered February 11, 2014 for services in Intl Class 35;
No. 4,527,041 RH ROBERT HALF MANAGEMENT RESOURCES (fig.), registered May 6, 2014 for services in Intl Class 35;
No. 4,527,042 RH ROBERT HALF TECHNOLOGY (fig.), registered May 6, 2014 for services in Intl Class 35; and
No. 2,689,298 RH ROBERT HALF TECHNOLOGY INFORMATION TECHNOLOGY PROFESSIONALS (fig.), registered February 18, 2003 for services in Intl Class 35.
Further, the Complainant is the owner of U.S. trademark registrations with the letter combination RH and RHI.
The disputed domain name was registered on November 24, 2022.
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 Complainant has rights to the ROBERT HALF trademark through its registration with the USPTO (e.g., Reg. No. 1,156,612, registered June 2, 1981). Registration of a trademark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a trademark under 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).”). As Complainant provides evidence of registration with the USPTO, the Panel find that Complainant has rights in the ROBERT HALF trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s ROBERT HALF trademark because it incorporates wholly Complainant’s trademark and differs only through the addition of the “.app” gTLD. The addition of a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Therefore, the Panel find that the disputed domain name is in practical identical to the Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Complainant argues that Respondent lacks rights or legitimate interest in the disputed 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 trademark or register domain names using Complainant’s trademark. 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 trademark 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 for the disputed domain name lists the registrant as “April House” and there is no other evidence to suggest that Respondent was authorized to use the ROBERT HALF trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name and was not granted usage rights per Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead the disputed domain name resolves to an inactive page. When a disputed domain name resolves to a webpage lacking content, panels have found a lack of rights and legitimate interests based on a lack of bona fide offerings of goods or services and/or legitimate noncommercial or fair uses. See Bloomberg L.P. v SC Media Servs. & Info. SRL, FA 0296583 (Forum, Sept. 2, 2004) (Finding that resolving to an empty page featuring no substantive content or links is evidence that Respondent fails to actively use the disputed domain name, suggesting a lack of rights and legitimate interests in the disputed domain name); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant has provided a screenshot of the disputed domain name’s resolving webpage indicating a blank page. The Panel therefore find that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii).
Complainant contends that Respondent registered and uses the disputed domain in bad faith because the disputed domain name resolves to an inactive website. Inactive use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). As noted above, the Complainant has provided a screenshot of the disputed domain name’s resolving webpage indicating a blank page, which is evidence of Respondent’s inactive holding. Non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. In this regard, the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain name may be put. Therefore the Panel find bad faith under bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the ROBERT HALF trademark at the time of registering the disputed domain name. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines 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 instead choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark 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 January 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 assertion, Complainant points to the fact that it registered the ROBERT HALF trademark over 70 years prior to the registration of the disputed domain name and argues that the totality of the circumstances establishes bad faith. As such, considering all circumstances and facts provided by the Complainant, the Panel find it likely that the Respondent did have actual knowledge of Complainant’s right in its trademark, thereby finding bad faith 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.app> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 1, 2023
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