Robert Half International Inc. v. Shawn Downey
Claim Number: FA1502001603347
Complainant is Robert Half International Inc. (“Complainant”), represented by Andrew Baum of Foley & Lardner LLP, New York, USA. Respondent is Shawn Downey (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalf.international>, registered with Godaddy 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 the Forum electronically on February 4, 2015; the Forum received payment on February 4, 2015.
On February 5, 2015, Godaddy LLC confirmed by e-mail to the Forum that the <roberthalf.international> domain name is registered with Godaddy LLC and that Respondent is the current registrant of the name. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 February 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2015 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.international. Also on February 5, 2015, 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 March 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant (RHI) owns registrations for ROBERT HALF with numerous trademark agencies across the world, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,156,612, registered June 2, 1981). Likewise, Complainant has registrations for marks incorporating ROBERT HALF INTERNATIONAL. Complainant uses these trademarks for employment agency services. Continuously since at least as early as 2000, RHI has been operating an Internet website <roberthalfinternational.com> where it describes its services and provides links to the websites of RHI’s international divisions.
The <roberthalf.international> domain name is confusingly similar to the ROBERT HALF mark as the domain name incorporates the mark in full, adding the gTLD “.international,” which is indicative of Complainant’s geographic reach and Complainant’s “Robert Half International Inc.” name.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent cannot show it is commonly known by the disputed domain name. Further, Respondent has failed to make any bona fide offering or legitimate noncommercial or fair use of the disputed domain name. The resolving website is only used as a placeholder for a purported pending website that is coming soon.
Respondent registered the at-issue domain name to trade off the goodwill established in the ROBERT HALF marks. Respondent’s use of the name with a pending website is indicative of bad faith in these circumstances. Respondent must have known of Complainant and its ROBERT HALF marks at the time of the domain name’s registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ROBERT HALF and ROBERT HALF INTERNATIONAL marks through its registration of such marks with the USPTO as well as through registration of such marks with other registrars worldwide, and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to hold an Internet address for a future website.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s trademark registrations with the USPTO and other registrars worldwide, independently and collectively, demonstrate Complainant’s rights in the ROBERT HALF and ROBERT HALF INTERNATIONAL marks pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name is formed by removing the space from Complainant’s ROBERT HALF trademark and appending the top-level domain name “.international” thereto. The removal of the space and addition of a necessary top-level domain name are together ineffective in distinguishing Respondent’s domain name from Complainant’s ROBERT HALF trademark under Policy ¶4(a)(i). Indeed, the addition of the geographically suggestive term “international” only fosters confusion between Complainant’s marks and the at-issue domain name. As compared to the ROBERT HALF INTERNATIONAL dominant portion of Complainant’s related marks, the <roberthalf.international> domain name lacks the space between the terms ROBERT and HALF and replaces the later space, between HALF and INTERNATIONAL, with a period, “.,” thus closely mapping Complainant’s related trademarks. Therefore, the Panel finds that the <roberthalf.international> domain name is identical to Complainant’s ROBERT HALF trademarks. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also, Securian Fin. Grp., Inc. v. me s / enom, FA 1595614 (Nat. Arb. Forum Jan. 16, 2015) (finding that “[a]s the <minnesota.life> domain name is comprised of the MINNESOTA LIFE mark with the insertion of a period in place of the space between the two-word mark such that the domain name retains identity to the mark, the Panel determines that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).”).
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 (Nat. Arb. 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 name. Respondent is not authorized to use Complainant’s trademarks 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.
WHOIS information for the at-issue domain name lists “Shawn Downey” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <roberthalf.international> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name as a placeholder for a purported pending website. The domain name addresses a parked website featuring links such as “Jobs (Hiring Now),” “Employment agencies,” and “CDL Training School.” Such use is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as the featured links direct users to employment agencies in competition with Complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above Respondent uses the at-issue domain name as a placeholder for a future website. The <roberthalf.international> domain name addresses a parking page featuring links, some of which compete with Complainant. Using the domain name in this manner is disruptive of Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Polilcy ¶4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent apparently registered the trademark identical <roberthalf.international> domain name to trade off the ROBERT HALF mark’s goodwill. Where, as here, the respondent is using a confusingly similar domain name to promote commercial links relating to or competing with the complainant’s business bad faith is demonstrated pursuant to Policy ¶4(4. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Respondent registered the <roberthalf.international> domain name knowing that Complainant had trademark rights in the ROBERT HALF and ROBERT HALF INTERNATIONAL related trademarks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of the entire mark into the at-issue domain name. The use of the “.international” top-level domain name also shows Respondent had prior knowledge of the ROBERT HALF mark as it suggests the scope of Complainant’s business and mimics Complainant’s business name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <roberthalf.international> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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 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.international> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 11, 2015
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