DECISION

 

Robert Half Inc. v. destini colbert

Claim Number: FA2401002080984

 

PARTIES

Complainant is Robert Half Inc. ("Complainant"), represented by Daniel Bernard of Foley & Lardner LLP, New York, USA. Respondent is destini colbert ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <humanresources-roberthalf.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 26, 2024; Forum received payment on January 26, 2024.

 

On January 26, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <humanresources-roberthalf.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 31, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 20, 2024 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@humanresources-roberthalf.com. Also on January 31, 2024, 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 formal Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a formal Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides specialized employment and staffing services. It has rights in the ROBERT HALF mark based upon its registration of that mark with the United States Patent and Trademark Office ("USPTO"). The <humanresources-roberthalf.com> domain name is confusingly similar to Complainant's mark because it incorporates the entire mark, merely adding the descriptive term 'humanresources" and adding the ".com" generic top-level domain ("gTLD").

 

Respondent has no rights or legitimate interests in the domain name. It is not commonly known by the domain name, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to a website which is inactive and hosts pay-per-click links to third-party websites.

 

Respondent registered and is using the domain name in bad faith. It attempts to attract for commercial gain Internet users to its website by causing confusion with Complainant's mark as to the source, sponsorship, endorsement or affiliation of its website, it passes off as Complainant, it disrupts Complainant's business, it is making no active use of the domain name other than to host pay-per-click links to third-party websites, and it registered the domain name with actual knowledge of Complainant and its mark.

 

B. Respondent

Respondent did not submit a formal Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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 formal Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The ROBERT HALF mark was registered to Complainant with the USPTO (Reg. No. 1,156,612) on June 2, 1981 (TSDR printout included in Complaint Annex 3). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). 

 

Respondent's <humanresources-roberthalf.com> domain name is identical or confusingly similar to Complainant's ROBERT HALF mark. It fully incorporates the mark, merely omitting a space and adding a hyphen, the descriptive term "humanresources" and a gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  ."),  Maxim Integrated Products v. liao jian jia, FA 2059513 (Forum Sept. 22, 2023) ("[the] Domain Name is identical or confusingly similar to Complainant's mark.  It fully incorporates the mark, . . . , merely adding a hyphen, the letters "ic," . . ., and a gTLD.  These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i)."), Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name, and the domain name is likely to cause confusion.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the ROBERT HALF mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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."). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not commonly known by the domain name, and (ii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to a website which is inactive and hosts pay-per-click links to third-party websites.  These allegations are addressed as follows:

 

The information furnished to Forum by the registrar lists "destini colbert" as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complaint Annex 2 is a screenshot of the parking page to which the domain name points. It displays a list of hyperlinks to "Attorney," "Lawyer," and "Recruiting Employees."  This site is obviously commercial in nature, offering click-through links to other vendors. As discussed more fully below in the Policy ¶ 4(a)(iii) bad faith analysis, however, Respondent may not be responsible for the content on the parking page. If that is the case, then there is no evidence that Respondent is making any active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' ' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

If Respondent is responsible for the content on the site, it is using the confusingly similar domain name to attract Internet traffic to its own commercial pay-per-click site, or is participating financially in a pay-per-click site initiated by another. This also is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) ("Respondent's demonstrated intent to divert Internet users seeking complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)"), 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).

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, the parking page to which the domain name points hosts three pay-per-click links all of which are directly related to the industry in which Complainant operates. To the extent Respondent initiated this arrangement or is sharing in the pay-per-click revenues, it is using the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent's web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).

 

It is not clear, however, that Respondent is responsible for the content of this website. Many registrars post links on parking pages associated with domain names whose owners have not developed a website. In such cases the registrant of the domain name may be unaware of the links and does not share in the revenues from them. The pay-per-click site in this case is likely a parking page set up by the registrar. It prominently displays the name of the registrar at the top of the page and even invites the visitor to inquire with the registrar if interested in acquiring the domain name. Although the evidence here is not conclusive, it seems likely that the Respondent had no active role in posting the content on the parking page resolving from the domain name.

 

If that is the case, Respondent is passively holding the domain name, making no active use of it, and this can, under certain circumstances, demonstrate bad faith registration and use. It does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding a confusingly similar domain name can be evidence of bad faith for the purposes of Policy ¶ 4(a)(iii).  Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The concept of bad faith as illustrated in the four subparagraphs above necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name, which in this case occurred on December 8, 2023 (WHOIS printout submitted as Complaint Annex 1 shows creation date). In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, simple impersonation of some sort, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the fanciful or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

In cases such as this, where the domain name may be passively held and no formal Response has been filed, it is not always easy to determine whether the respondent registered and has been using the domain name with actual knowledge of the complainant and its rights in the mark. In this case, however, Complainant demonstrated that it is well-known throughout the world for the services it provides. According to the Declaration of Barbara Jurczyk, Senior Manager of Brand Strategy for Complainant, Complainant has more than 10,000 employees and has some 400 offices around the world. It has been honored with many notable awards, including being named to Fortune magazine's "Most Admired Companies" list every year since 1998, being named "America's Best Professional Recruiting Firm" by Forbes from 2018-2022, being named "America's Best Executive Recruiting Firm" by Forbes in 2022 and one of "America's Best Executive Recruiting Firms" by Forbes from 2017-2021, being named "America's Best Temporary Staffing Firm" by Forbes from 2021-2022, and being recognized by Barron's as one of the "100 Most Sustainable Companies" from 2018-2022. 7. As a result of this extensive advertising and promoting, Complainant's ROBERT HALF mark has become well-known and associated exclusively in the industry with Complainant and has generated significant revenues from the rendering of ROBERT HALF-branded services. Respondent copied the ROBERT HALF mark verbatim into the domain name and even added a term which precisely describes the services for which Complainant is well-known. There can be no doubt that Respondent registered the Domain Name with actual knowledge of Complainant and its mark.

 

Since the Policy requires a complainant to prove both registration and a continuing use in bad faith, the question next arises whether Respondent's passive holding of the domain name constitutes a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, assuming that Respondent is not responsible for the content on the resolving parking page, there is no evidence that Respondent is holding the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already concluded that Respondent had actual knowledge of Complainant and its rights in the ROBERT HALF mark when it registered the domain name, and that knowledge certainly continues. Also, Respondent is holding a domain name which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its products, which in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA  1879162 (Forum Mar. 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights, especially since the domain name indicates operations in the same market segment as that in which Complainant operates. Respondent's passive holding of the domain name constitutes a continuing use in bad faith within the meaning and for the purposes of Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent is passing off as Complainant. The Panel is not persuaded. The only evidence of passing off is the registration and use of a domain name that is confusingly similar. Because this implies some sort of affiliation with Complainant it tends to attract Internet users to the parking page but as Complainant itself alleges, Respondent is making no active use of that site and there is certainly no evidence from any other source of affirmative impersonation or representation that Respondent is somehow affiliated or connected with Complainant. The mere registration and use of a confusingly similar domain name does not constitute a passing off or impersonation.  There must be some affirmative representation of identity or affiliation with the complainant for a case of passing off or impersonation to be made.

 

For the reasons first set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <humanresources-roberthalf.com> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Charles A. Kuechenmeister, Panelist

Dated: February 23, 2024