Randstad Holding N.V. v. [Redacted]
Claim Number: FA1109001407799
Complainant is Randstad Holding N.V. (“Complainant”), represented by Jessica E. Lewis of Alston & Bird, LLP, Georgia, USA. Respondent’s personal information is redacted from this Decision for the reasons further explained.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <randstadinc.net>, registered with GoDaddy.com, Inc.
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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received payment on September 16, 2011.
On September 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <randstadinc.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2011 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@randstadinc.net. Also on September 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 October 6, 2011.
On October 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on the Complainant’s use and ownership of the mark RANDSTAD in the United States of America since 1993 to identify employment and staffing related services.
Complainant’s main contentions are as follows:
B. Respondent
Respondent responded to Complainant’s contentions on October 6, 2011 as follows:
1. Respondent was a victim of identity theft.
2. Complainant is the owner of the mark RANDSTAD in the United States of America.
3. Complainant offers employment and staffing related services through its website <randastadusa.com>.
4. Registrant impersonated Complainant by means of the website resolving from the disputed domain name.
5. Registrant obtained commercial gain from the personal information that deceived Internet consumers provided him during his impersonation of Complainant.
6. Registrant is passively holding the domain name <randstadinc.net> and is blocking Complainant from registering this domain name on its behalf.
PRELIMINARY ISSUE: IDENTITY THEFT
Respondent contends that she was a victim of identity theft. The registration of the disputed domain name on her behalf is a consequence of an unauthorized and fraudulent transaction made by an unknown third party with her credit card. Respondent shows no interest in keeping the registration of the disputed domain name as she is only interested in the cessation of all legal actions against her.
Respondent annexed to her response the following evidence, which the sole Panelist finds conclusive to prove the identity theft of which Respondent was victim: i) Account Statement - Period September 21 – October 20, 2010 of Respondent’s credit card, issued by her financial institution. This account statement shows the two transactions that Respondent contends were not authorized by her, particularly one charge of USD$10.00 paid to GoDaddy.com exactly the same day on which the disputed domain name was registered. ii) Report to the correspondent financial institution dated November 29, 2010 of the unauthorized payments made with Respondent’s credit card, including the USD$10.00 charge paid to GoDaddy.com.
Pursuant to Policy 4(j) “All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.
Therefore, this Panel determines that the circumstances of the case, particularly the claim of identity theft of Respondent, justify the redaction of Respondent’s personal information from this decision.
In addition, the sole Panelist considers that Respondent’s lack of interest in keeping the registration of the disputed domain name along with her claim of identity theft qualifies as an authorization to transfer the domain name <randstadinc.net> to Complainant[1].
However, this Panel will not forego the traditional UDRP analysis as per paragraph 4(a) of the Policy, but will carry it out in respect to the actual Registrant of the domain name (hereinafter “Registrant”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three (3) elements to obtain an order that a domain name be cancelled or transferred:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the sole panelist will determine whether or not the Disputed Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights. Secondly (Section B), the sole Panelist will verify if Registrant has any rights or legitimate interests in respect of the Disputed Domain Name; and thirdly (Section C), the sole Panelist will establish whether or not the Disputed Domain Name has been registered and is being used in bad faith by Registrant.
Complainant contends to be the owner of the RANDSTAD mark in the United States of America, which has been continuously used since 1993 to identify employment and staffing related services.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks,[2] and thus, it is well established that a Complainant is not required to own a registered trademark to invoke the Policy. It is possible in certain common law jurisdictions, such as the United States of America, that Complainant can have rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the RANDSTAD mark. Annex 8 to the Complaint includes printouts from the United States Patent and Trademark Office (USPTO) online database regarding the Certificates of Registration of the mark RANDSTAD in the international classes 35 and 41. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the mark and the exclusive right to use it in connection with the stated services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[3]
Thus, Complainant established its rights in the RANDSTAD mark, not only based on the USPTO certificates of registration but also by means of its use in commerce in the United States of America.
Therefore, the sole Panelist concludes that Complainant has demonstrated registered and common law rights in the RANDSTAD mark for purposes of Paragraph 4(a)(1) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
Complainant alleges that the disputed domain name is likely to be associated with the mark RANDSTAD since it wholly comprises said mark. The additions of the “inc” term and the “.net” gTLD do not eliminate or reduce the confusion or similarity between the RANDSTAD mark and the domain name <randstadinc.net>.
Before establishing whether or not the domain name <randstadinc.net> is confusingly similar to the Complainant’s RANDSTAD mark, the sole Panelist wants to point out that the addition of generic top-level domains (gTLD) (i.e., “.com,” “.biz,” “.edu,” “.org”, ”.co”) cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD) (i.e., “.co.,” “.de,” “.cr,” “.es”) nor the insertion of a gTLD have a distinctive function.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD) in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” This conclusion applies to the “.net” gTLD.
In addition, the sole Panelist agrees with the Complainant on the conclusion that including the term “inc” at the end of the second-level domain name is not sufficient to make the disputed domain name different from the RANDSTAD mark. Indeed, “inc” is a generic term referring to a business’ incorporation status. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007), in which the Panel concluded that “additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i)”.
In consequence, as per this reasoning, the sole Panelist finds that, in the present case, the disputed domain name is confusingly similar to the Complainant’s mark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element (“respondent has no legitimate interests in respect of the domain name”) of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In Barnes v. Old Barn Studios Ltd, D2001-0121 (WIPO Mar. 30, 2001), the Panel stated:
Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.
Therefore, a Complainant is required to make a prima facie case that the Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Registrant has no rights or legitimate interests in the domain name <randstadinc.net>: Registrant has no affiliation with Complainant; Registrant has not been authorized by Complainant to use the mark RANDSTAD in any manner; Registrant has not used the disputed domain name in connection with a bona fide offering of goods and services.
The sole Panelist accepts this assertion as a prima facie case made by Complainant that shifts the burden of proof to Registrant.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Respondent confirmed Complainant’s contentions in her response; that is, Registrant lacks rights or legitimate interest in the domain name since Respondent was a victim of identity theft. Respondent in particular stated in her Response to the Complaint: “Respondent, [Redacted], is unable to respond to the specific allegations made in the complaint due to the fact that the purchase of the domain name randstadinc.net was the result of unauthorized and fraudulent use of Respondent’s credit card. As such, Respondent is unable to control, access, manage or transfer this domain name”.
The lack of rights or legitimate interest of Respondent in regard to the disputed domain name applies to the Registrant for obvious reasons: Someone who dares to use a third party’s credit card without authorization cannot have any right or legitimate interest in what was bought with said fraudulent action.
Therefore, the second requirement of paragraph 4 (b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular, but without limitation, if found by the sole Panelist to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(2) You have 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 you have engaged in a pattern of such conduct; or
(3) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
To begin with, the sole Panelist deems the identity theft of which Respondent was victim and which led to the registration of the disputed domain name to be registration in bad faith per se. It is clear that identity theft is a crime that must be punished according to the laws of the corresponding jurisdiction. Registrant of the domain name <randstadinc.net> not only stole money from Respondent but also involved Respondent in a legal matter that has nothing to do with her and her behavior.
Complainant claims that Registrant has attempted to lure Internet users to its website by registering and using a domain name confusingly similar to the mark RANDSTAD to deceive consumers into believing that they reached Complainant’s official website. As a matter of fact, a consumer of Complainant’s employment services believed that the <randstadinc.net> domain name was the official website of Complainant. Annex 9 to the Complaint includes an e-mail sent by said consumer to Complainant on March 8, 2011, in which he attempted to confirm a job offer he received from Mr. Chuck Turner, alleged CEO and Managing Director of Randstad Incorporation.
This Panel considers that registering the domain name <randstadinc.net> wholly comprising the RANDSTAD mark is registration in bad faith. The sole Panelist conducted searches on various online dictionaries to confirm that RANDSTAD is a word with no meaning in the English, German and Dutch languages. Therefore, Registrant must have had prior knowledge of the RANDSTAD mark and its ownership by a company named RANDSTAD (regardless of its incorporation status). Prior Panels have concluded likewise. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, D2011-1311 (WIPO Sept, 27, 2011) in which the Panel stated:
The Panel also believes that Respondent would not have constructed the disputed domain name with the inclusion of the ELECTROLUX word, if he lacked of prior knowledge of the ELECTROLUX mark. Therefore, he must have had actual knowledge of the ELECTROLUX mark before March 9, 2011, which is the registration date of the domain name <electroluxmadrid.info>.
The word “electrolux” has neither meaning in the Spanish nor in the English languages. The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion.
In addition, if Respondent knew the mark, it also must have known its owner, or at least it must had been clear that it was not his but someone else’s mark. Registering a domain name while being aware that it comprises someone else’s mark, is also deemed as registration in bad faith.
This Panel also accepts as true that Registrant deceived consumers to believe that they were reaching Complainant’s official website where they would be able to obtain Complainant’s services in exchange of their personal information.
Complainant failed to include evidence of the website constructed by Registrant to represent himself as RANDSTAD “INCORPORATION”. However, the sole Panelist finds Annex 9 to the Complaint as sufficient and conclusive evidence of how Registrant impersonated Complainant by means of the domain name <randstadinc.net> and succeeded with it.
This evidence leaves no doubt of the Registrant’s awareness of the Complainant’s existence and services provided through Complainant’s website at the <randstadusa.com> domain name as shown in Annex 7. Registrant used this prior knowledge to impersonate Complainant and obtain commercial gain from said impersonation, which is registration and use of the disputed domain name in bad faith as per paragraph 4 (b) of the Policy. Prior Panels have held accordingly. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) where the Panel concluded: “The Panel finds Respondent’s registration and use of the disputed domain name to fraudulently pass itself off as Complainant in order to obtain cell phones via Complainant’s corporate account is evidence of Respondent’s bad faith under Policy ¶4(a)(iii)”.
The impersonation had a clear purpose: Registrant conceived a plan based on his prior knowledge of Complainant’s existence, mark, website and business, to obtain Internet users’ personal information and derived from it commercial gain.
The personal information that deceived Internet users provided Registrant with has commercial value and he must know it: It is useful for market research and advertising purposes, among other things. There are plenty of potential customers to which Registrant may sell such type of information[4].
Both Internet users and Complainant are innocent victims of the Registrant’s fraud: On the one hand, Internet users who visited the fraudulent website of Registrant wasted their time and effort in completing forms with their personal information hopeful of getting a job, but they will only receive spam mails and other advertising as a consequence of the theft of their personal information, notwithstanding the possibility that they may also be victims of identity theft. On the other hand, Complainant’s goodwill and reputation among deceived consumers may be diminished, and perhaps those consumers will never be interested in Complainant’s services again or they will deter potential consumers of those services from hiring them.
In addition, Annex 10 to the Complaint shows that Complainant contacted Domains by Proxy on March 22, 2011 after receiving the inquiry included as Annex 9 to require the removal of the fraudulent website. Registrant did remove the website afterwards, yet he kept in force the registration of the domain name. Complainant contends this is also use of the domain name in bad faith as per Policy 4 (b), because it prevents Complainant from registering and using said domain name.
Respondent said in her response that the e-mail address listed in the WhoIs information of the domain name <randstadinc.net> does not and has not ever belonged to her or been under her control. This e-mail address was and is rather under control of Registrant. Therefore, once Domains by Proxy sent an e-mail to the address jon.gareth04@gmail.com informing of the Complainant’s claim and consequent disclosure of identity, Registrant knew it was time to remove the fraudulent website.
The sole Panelist confirmed that the registration of the disputed domain name was renewed during the course of this administrative proceeding. A search of the domain name <randstadinc.net> conducted on October 25, 2011 at the WhoIs database of GoDaddy.com shows that its registration was renewed on October 5, 2011. Therefore, Registrant may have removed the website, but he insists on keeping the domain name, most likely with fraudulent intentions. The Panel agrees with the Complainant on its conclusion: Passively holding a domain name is equal to using it in bad faith.
The three elements of the Policy 4 (a) (iii) are satisfied in the present case in respect to Registrant of 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 <randstadinc.net> domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: October 25, 2011
[1] See Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).
[2] See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000), citing British Broadcasting Corp. v. Jaime Renteria, D2000-0050 (WIPO Mar. 23, 2000).
[3] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[4] See YottaMark, Inc. v. Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011).
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