Robert Half International Inc. v. Dean Sapp
Claim Number: FA1811001816127
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is Dean Sapp (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthaflegal.com>, registered with GoDaddy.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2018; the Forum received payment on November 14, 2018.
On November 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <roberthaflegal.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 November 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2018 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@roberthaflegal.com. Also on November 20, 2018, 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 December 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Robert Half International Inc. is the world’s largest specialized employment staffing firm. Complainant has rights in the ROBERT HALF mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612 registered Jun. 2, 1981). Respondent’s <roberthaflegal.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark and merely omits the letter “L” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <roberthaflegal.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the ROBERT HALF mark. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage that contains advertisements to purchase the domain name. Additionally, Respondent uses fraudulent email addresses to pass itself off as Complainant in order to criminally obtain Complainant’s current and potential employee’s personal information.
Respondent registered and uses the <roberthaflegal.com> domain name in bad faith because Respondent attempts to pass itself off as Complainant through fraudulent email addresses in order to defraud Complainant’s potential and current employees. Furthermore, Respondent has engaged in the practice of typosquatting by intentionally misspelling Complainant’s mark in the domain name. Additionally, Respondent fails to make an active use of the disputed domain name. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <roberthaflegal.com>domain name.
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 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 (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.”).
Complainant asserts rights in the ROBERT HALF domain name based on its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its registration of the ROBERT HALF mark with the USPTO (e.g., Reg. No. 1,156,612 registered Jun. 2, 1981). See The Panel finds that Respondent has rights in the ROBERT HALF mark under a Policy ¶ 4(a)(i) analysis.
Complainant contends that Respondent’s <roberthaflegal.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark merely omitting the letter “L” and adds the “.com” gTLD. The mere omission of single letters from complainant’s mark in a domain name may not be sufficient to negate any confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Additionally, the addition of a gTLD is irrelevant for Policy ¶ 4(a)(i) purposes. See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark). Further, while Complainant does not make this contention, the domain name also adds the term “legal” to Complainant’s mark, which also fails to distinguish the domain name in this analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Accordingly, the Panel finds that Respondent’s <roberthaflegal.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <roberthaflegal.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ROBERT HALF mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Additionally, lack of authorization from complainant to use its mark may be further evidence that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Dean Sapp,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds that under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <roberthaflegal.com> domain name.
Complainant asserts that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the disputed domain name resolves to an inactive webpage containing advertisements offering the <roberthaflegal.com> domain name for sale. Failure to actively use a disputed domain name and offering a domain name for sale may not be considered a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the webpage associated with the disputed domain name which shows a parked webpage that contains links offering to sell the disputed domain name. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent attempts to pass itself off as Complainant using a fraudulent email address in order to phish for Complainant’s current and potential employees personal information. Use of a disputed domain name to pass itself off as a complainant in furtherance of an email phishing scheme may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a copy of the phishing email that was sent out by Respondent, which shows that Respondent uses the ROBERT HALF mark in connection with employment services. The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant alleges Respondent attempts to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As previously mentioned, Complainant provides a copy of the phishing email that was sent out by Respondent. The Panel finds this is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to benefit from a confusing similarity between a disputed domain name and a mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, Complainant asserts Respondent merely omits the letter “L” in the ROBERT HALF mark. The Panel agrees with Complainant and finds that Respondent’s omission of a single letter in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Complainant also asserts that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use a domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). As noted previously, Complainant provides screenshots of the webpage associated with the disputed domain name which shows a parked webpage that contains “Related Links” and purports to offer to sell the disputed domain name. The Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of a complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
Complainant asserts given the global reach of the Internet and the fact that Respondent's attempts to pass itself off as Complainant alongside Respondent’s typosquatting behavior, Respondent must have been aware of Complainant and its ROBERT HALF mark prior to registering the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the ROBERT HALF mark prior to registering the <roberthaflegal.com> domain name, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <roberthaflegal.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 20, 2018
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