Robert Half International Inc. and Protiviti Inc. v. Douglas Njenga / SAMs / Nelson Dcruz / PROT
Claim Number: FA2301002026164
Complainant is Robert Half International Inc. and Protiviti Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York. Respondent is Douglas Njenga / SAMs / Nelson Dcruz / PROT (“Respondent”), KE.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roberthalf.work>, and <protiviti.online>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 3, 2023; Forum received payment on January 3, 2023.
On January 03, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <roberthalf.work>, and <protiviti.online> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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.work, postmaster@protiviti.online. Also on January 9, 2023, 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 February 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Robert Half International Inc. and Protiviti Inc. is an employment staffing agency.
Complainant asserts rights in the ROBERT HALF and PROTIVITI marks based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <roberthalf.work> and <protiviti.online> are confusingly similar to Complainant’s ROBERT HALF and PROTIVITI trademarks because they incorporate the marks in their entirety and add the generic top-level domain names (“gTLD”) “.work” and “.online”.
Respondent does not have rights or legitimate interests in the at-issue domain names. Respondent is not licensed or authorized to use Complainant’s ROBERT HALF or PROTIVITI mark and is not commonly known by either at-issue domain name. Respondent also does not use either domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent engages in inactive holding of the at-issue domain names.
Respondent registered and uses the domain names in bad faith. Respondent creates a likelihood of confusion and disrupts Complainant’s business by attempting to pass off as Complainant for commercial gain. Respondent engages in inactive holding of the Disputed Domain Names. Respondent had actual or constructive knowledge of Complainant’s rights in the ROBERT HALF and PROTIVITI marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ROBERT HALF and PROTIVITI trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in ROBERT HALF and PROTIVITI trademark.
Respondent holds the at-issue domain names passively.
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”).
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In this proceeding there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant alleges that Protiviti, Inc. is the wholly-owned subsidiary of Robert Half International The Panel therefore finds that the two named complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they may be treated as if a single entity. Notably, there is no objection by Respondent to the two named complainants proceeding together as if one and Complainant’s relevant assertions are uncontested. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity operating under two different aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name leads with Complainant’s entire trademark and is followed by a top-level that is suggestive of Complainant’s business. The domain names were both registered in 2022 through NameSilo, LLC. Both nominal registrants are located in Nyahururu, Kenya and both domain names are held passively. While it is possible that the domain names’ underlying registrants may or may not differ in their relevant WHOIS data, the at-issue domain names nevertheless appear to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s contention that the domain names’ registrants are one and the same and thus should be treated as a single entity is unopposed. Therefore, the Panel will treat the nominal respondents (herein after referred to collectively as Respondent) as one for the purposes of this proceeding.
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the ROBERT HALF and PROTIVITI marks per Policy ¶ 4(a)(i) through its registration of such marks with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <roberthalf.work> and <protiviti.online> domain names each contain the entirety of one of Complainant’s trademarks with all followed by either the “.work” or “.online” top-level domain name. The differences between the at-issue domain names and Complainant’s trademarks are insufficient to distinguish either at-issue domain name from one of Complainant’s trademarks for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <roberthalf.work> and <protiviti.online> domain name are each confusingly similar to one of Complainant’s at-issue trademarks. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Even if the descriptive terms that are now permitted as top-level domain names (“work” and “online”) are used here in the at-issue domain names are considered in the Panel’s analysis, the at-issue domain names are nevertheless indistinguishable from Complainant's relevant trademark under Policy ¶ 4(a)(i). In fact, here the relevant top-levels suggest Complainant’s business thus adding to any confusion between Complainant’s marks and Respondent’s domain names. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”);
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue 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 <roberthalf.work> and <protiviti.online> shows that “Douglas Njenga / SAMs / Nelson Dcruz / PROT” are the at-issue domain names’ registrants and there is no evidence in the record indicating that Respondent is known by either the <roberthalf.work> or the <protiviti.online> domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Respondent holds the at-issue domain name passively. Browsing to either <roberthalf.work> or <protiviti.online> returns a system error message. Respondent’s passive holding of the at-issue domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”); see also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <roberthalf.work> and <protiviti.online>domain names are each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy concerning each domain name.
First, Respondent holds both <roberthalf.work> and <protiviti.online> passively as browsing to either domain name returns a system error message. Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also, 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.”).
Next, Respondent’s passive holding of the confusingly similar at-issue domain names suggests Respondent’s present intent to capitalize on the confusion between the domain names and Complainant’s trademarks at some time in the future. Respondent may then, using the at-issue domain name, pass itself off as Complainant and improperly exploit the goodwill in Complainant’s trademarks via one or more unhappy scenarios. Doing so indicates bad faith per Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). However, Complainant need not wait until Respondent trades on Complainant’s marks and benefits from the confusingly similar domain names for the Panel to find Respondent to be acting in bad faith pursuant to Policy ¶ 4 (a)(iii). Here, Respondent’s mere registration of the confusingly similar domain names, each laden with one of Complainant’s well-known trademarks, without some benign basis for doing so indicates Respondent’s present bad faith intent to capitalize on Complainant’s trademarks.
Moreover, Respondent registered the <roberthalf.work> and <protiviti.online> domain name knowing that Complainant had trademark rights in ROBERT HALF and PROTIVITI. Respondent’s actual knowledge of Complainant’s rights in ROBERT HALF and PROTIVITI is evident from the notoriety of Complainant’s trademarks and from Respondent’s registration of multiple domain names containing Complainant’s marks. Respondent’s registration of <roberthalf.work> and <protiviti.online> while having knowledge of Complainant’s trademark rights in ROBERT HALF and PROTIVITI further indicates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed the disputed domain name”).
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.work> and <protiviti.online> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 6, 2023
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