Robert Half International Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2204001992120
Complainant is Robert Half International Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billinginvoicesdpkroberthalf.com>, registered with Media Elite Holdings Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2022; the Forum received payment on April 12, 2022.
On April 14, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <billinginvoicesdpkroberthalf.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 April 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@billinginvoicesdpkroberthalf.com. Also on April 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant, Robert Half International Inc., utilizes its ROBERT HALF mark in connection with professional staffing and consulting services. Complainant maintains registration in its ROBERT HALF mark with multiple authorities including Russia, United Arab Emirates (UAE), Brazil, China, Canada, European Union, and with the United States Patent and Trademark Office (USPTO).
2. The <billinginvoicesdpkroberthalf.com>[i] domain name is identical or confusingly similar to Complainant’s ROBERT HALF mark because it incorporates Complainant’s mark while adding in the descriptive term “billing invoices” and the acronym “dpk”, which Complainant asserts is the acronym for the city of Deer Park, Illinois - the city where Complainant handles its billing operations and adds the “.com” generic top-level domain (“gTLD”) to form a domain name.
3. Respondent does not have any rights or legitimate interests in the <billinginvoicesdpkroberthalf.com> domain name because Respondent is not commonly known by the domain name nor is Respondent authorized to use Complainant’s ROBERT HALF mark.
4. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving website is used to host pay-per-click advertisements leading users to websites of third parties.
5. Further, Respondent may be using the domain name in furtherance of a phishing scheme to obtain personal and financial information from Complainant’s customers and partners via email.
6. Respondent registered and uses the <billinginvoicesdpkroberthalf.com> domain name in bad faith because Respondent’s domain resolves to a website hosting pay-per-click advertisements that redirect users to the webpages of third parties.
7. Respondent uses the domain to pass off as Complainant by creating a likelihood of confusion through its use of the entire ROBERT HALF mark and the incorporation of the acronyms and generic or highly descriptive terms.
8. Respondent may be using the domain in furtherance of a phishing scheme via email.
9. Respondent acted with constructive and/or actual knowledge of Complainant’s rights in the ROBERT HALF mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ROBERT HALF mark. Respondent’s domain name is confusingly similar to Complainant’s ROBERT HALF mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <billinginvoicesdpkroberthalf.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant claims rights in the ROBERT HALF mark through its registration with multiple authorities, including the USPTO. Registration of a mark with multiple authorities is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant has provided evidence of its registration of the ROBERT HALF mark with the USPTO (e.g. Reg. No. 1,156,612 – Registered on Jun. 2, 1981). Therefore, Complainant has rights in the ROBERT HALF mark under Policy ¶ 4(a)(i).
Complainant argues that the <billinginvoicesdpkroberthalf.com> domain name is identical or confusingly similar to Complainant’s ROBERT HALF mark because it incorporates Complainant’s mark while adding in the descriptive term “billing invoices” and the acronym “dpk”, which Complainant asserts is for Deer Park, Illinois – the location of Complainant’s billing operations, and adds the “.com” gTLD to form a domain name. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of acronyms, descriptive terms, and a gTLD to form a domain name. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta). Therefore, the Panel holds that the <billinginvoicesdpkroberthalf.com> domain name is confusingly similar to Complainant’s ROBERT HALF mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <billinginvoicesdpkroberthalf.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent does not have any rights or legitimate interests in the <billinginvoicesdpkroberthalf.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s ROBERT HALF mark. Where a respondent does not provide evidence to the contrary, evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found through identifying WHOIS information that is unrelated to a domain name and where a respondent lacks authorization to use a complainant’s mark. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). WHOIS information identifies the Registrant of the domain name as “Domain Administrator” of “Fundacion Privacy Services LTD”. Complainant asserts, without contradiction in the record, that Respondent is not associated with Complainant nor is Respondent authorized to use Complainant’s ROBERT HALF mark. Therefore, the Panel holds that Respondent is not commonly known by the <billinginvoicesdpkroberthalf.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <billinginvoicesdpkroberthalf.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s domain resolves to a webpage hosting pay-per-click links that redirect users to third-party webpages. Use of a domain name incorporating the mark of another to host pay-per-click hyperlinks to third-parties may be evidence that a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant provides screenshots of the resolving website which displays links for “Automated Recurring Payments”, “Automated Billing System”, and “Subscription Billing”. Complainant asserts that Respondent is receiving financial benefit from click-through fees associated with these links. Nothing in the record contradicts that assertion. Therefore, the Panel holds that Respondent is not using the <billinginvoicesdpkroberthalf.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <billinginvoicesdpkroberthalf.com> domain name in bad faith because Respondent’s domain hosts pay-per-click hyperlinks that divert users away from Complainant’s business and onto the websites of third parties while Respondent presumably receives some commercial benefit. Use of a domain name incorporating the mark of another to host pay-per-click advertisements directing users to third-party webpages is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Complainant provides screenshots of the resolving website which displays links for “Automated Recurring Payments,” “Automated Billing System,” and “Subscription Billing.” Therefore, the Panel holds that Respondent registered and uses the <billinginvoicesdpkroberthalf.com> domain name in bad faith under Policy ¶¶ 4(a)(iii) and (iv).
Complainant asserts that, due to its registration with the USPTO, Respondent must have had actual knowledge of Complainant's rights in the ROBERT HALF mark when Respondent registered the <billinginvoicesdpkroberthalf.com> domain name. Complainant further argues that Respondent’s use of Complainant’s mark, incorporation of the “dpk” acronym of where Complainant hosts its billing operations, and the incorporation of the term “billing invoices” further indicates that Respondent had actual knowledge of Complainant and its rights in the ROBERT HALF mark. The Panel agrees. See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds 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 <billinginvoicesdpkroberthalf.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 24, 2022
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