Robert Half International Inc. v. Mark Schacht
Claim Number: FA1506001622554
Complainant is Robert Half International Inc. ("Complainant"), represented by Andrew Baum of Foley & Lardner LLP, New York, USA. Respondent is Mark Schacht ("Respondent"), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalfgroup.com>, registered with eNom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2015; the Forum received payment on June 4, 2015.
On June 4, 2015, eNom, Inc. confirmed by email to the Forum that the <roberthalfgroup.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@roberthalfgroup.com. Also on June 9, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 provides employment placement and staffing services throughout the United States and elsewhere. Complainant's worldwide revenues were US$4.7 billion in 2014. Complainant and its predecessors have used the ROBERT HALF trademark in connection with these services since 1948. The mark is registered in the United States and many other countries, and Complainant asserts that it has become famous as a result of widespread use and advertising.
The disputed domain name <roberthalfgroup.com> was registered on or about December 2, 2014, through a privacy registration service offered by the registrar, eNom, Inc. Complainant contends that the disputed domain name is confusingly similar to its ROBERT HALF mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent is not commonly known by the domain name and has not been given permission to use Complainant's mark. Complainant alleges that Respondent's sole use of the domain name has been to redirect Internet users to Complainant's own French-language website, and suggests that Respondent may be inserting itself into the line of communication between Complainant and actual or potential customers for nefarious purposes. Complainant asserts that any active use of the domain name by Respondent would mislead the public and disrupt Complainant's business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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(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 disputed domain name corresponds to Complainant's registered trademark, with the space omitted and the generic term "group" and the ".com" top-level domain appended thereto. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Chan Luu Inc. v. Li Yong Ze, FA 1463461 (Nat. Arb. Forum Nov. 2, 2012) (finding <chanluugroup.com> confusingly similar to CHAN LUU); Robert Half Int'l Inc. v. Greg Timm, FA 1342142 (Nat. Arb. Forum Sept. 29, 2010) (finding <roberthalfconsulting.com> confusingly similar to ROBERT HALF). The Panel finds that the disputed domain name is confusingly similar to Complainant's ROBERT HALF mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known mark, combined with a generic term loosely related to Complainant's business, and was registered without Complainant's authorization. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name. See Chevron Intellectual Property LLC v. Phillip Thomas / Chevron Pacific, FA 1615524 (Forum May 29, 2015) (finding lack of rights or legitimate interests under similar circumstances).
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009). Furthermore, a domain name may be so closely connected with a well-known trademark that its very use suggests opportunistic bad faith. See, e.g., Bloomberg Finance L.P. v. Guo Mian, FA 1619037 (Forum June 12, 2015) (finding opportunistic bad faith in registration of <bloombergdata.net>).
In the Panel's view, Respondent's registration and use of a domain name incorporating Complainant's well-known mark, in a manner seemly calculated to create confusion -- and without any plausible alternative explanation -- are indicative of bad faith for purposes of (at least) paragraph 4(b)(iv) of the Policy. See, e.g., Chevron Intellectual Property LLC v. Phillip Thomas / Chevron Pacific, supra (finding registration and use in bad faith, where domain name incorporating well-known mark was redirected to complainant's own website without explanation); Robert Half Int'l Inc., supra (finding registration and use in bad faith, where respondent registered and passively held domain name almost 30 years after complainant's registration of corresponding trademark). The Panel therefore finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roberthalfgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 8, 2015
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