Robert Half International Inc. v. DNS Admin / Buntai LTD
Claim Number: FA2210002017704
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is DNS Admin / Buntai LTD (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybenefitsroberthalf.com>, registered with Key-Systems GmbH.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on October 26, 2022; Forum received payment on October 26, 2022.
On October 28, 2022, Key-Systems GmbH confirmed by e-mail to Forum that the <mybenefitsroberthalf.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@mybenefitsroberthalf.com. Also on November 1, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions:
Complainant, Robert Half International Inc., is a leading international professional staffing agency that does business under various ROBERT HALF marks. Complainant has rights in the ROBERT HALF mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered June 2, 1981). See Compl. Ex. 3. Respondent’s <mybenefitsroberthalf.com> domain name is identical or confusingly similar to the ROBERT HALF mark because it includes the entirety of the mark and then appends terms that describe Complainant’s services and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <mybenefitsroberthalf.com> domain name, as Respondent is not commonly known by the name, nor has Complainant authorized or licensed Respondent to use the ROBERT HALF mark. Respondent also has no bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to an inactive and inaccessible site.
Respondent also registered and is using the <mybenefitsroberthalf.com> domain name in bad faith. Respondent is seeking to pass itself off as or portray some affiliation with Complainant for commercial gain, disrupting Complainant’s business. The disputed domain name’s resolving webpage is inaccessible. Respondent registered and is using the disputed domain name with actual or constructive knowledge of Complainant’s rights in the ROBERT HALF mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading international professional staffing agency that does business under various ROBERT HALF marks.
2. Complainant has established its rights in the ROBERT HALF mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,156,612, registered June 2, 1981).
3. Respondent registered the <mybenefitsroberthalf.com> domain name on July 6, 2022.
4. Respondent has caused the disputed domain name to resolve to an inactive and inaccessible site.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ROBERT HALF mark through multiple trademark registrations with the USPTO (e.g., Reg. No. 1,156,612, registered on June 2, 1981). See Compl. Ex. 3. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the ROBERT HALF mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the ROBERT HALF mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROBERT HALF mark. Complainant argues that the <mybenefitsroberthalf.com> domain name is confusing similar to its ROBERT HALF mark because the domain name includes the whole of the ROBERT HALF mark with a generic expression added. The addition of generic terms to a domain name that incorporates an entire mark fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Prior Panels have also referred to the inclusion of terms that describe a complainant’s services when considering identity and confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Also, gTLDs are irrelevant for Policy ¶ 4(a)(i) analysis. See, e.g., Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). In this case, <mybenefitsroberthalf.com> uses the entire ROBERT HALF MARK with the gTLD “.com”. It adds the terms “my” and “benefits”, which Complainant submits adds additional confusion since Complainant owns the domain name <roberthalfbenefits.com> for its employee benefits program. The Panel agrees.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the ROBERT HALF trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ROBERT HALF mark and to use it in its domain name, adding only the generic words “my” and “benefits” to the trademark which does not negate any confusingly similarity between the domain name and the trademark;
(b) Respondent registered the domain name on July 6, 2022;
(c) Respondent has caused the disputed domain name to resolve to an inactive and inaccessible site;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <mybenefitsroberthalf.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ROBERT HALF mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. 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)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for <mybenefitsroberthalf.com> lists the registrant as “DNA Admin” with a business named “Buntai LTD”. See Registrar Email Verification. Complainant submits it never authorized Respondent to use the ROBERT HALF mark. See Jurczyk Decl. at ¶ 9. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because <mybenefitsroberthalf.com> resolves to an inactive and inaccessible website. When a respondent does not make any active use of a domain name, Panels have rightly found there is no bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Here, Complainant provides a screenshot of a web browser attempting to connect to the disputed domain name that shows the site cannot be reached. See Compl. Ex. 2. Accordingly, the Panel finds that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is passing itself off as Complainant or attempting to portray an affiliation or association with Complainant for commercial gain by intentionally causing confusion. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). As the Panel agrees that Respondent’s confusingly similar <mybenefitsroberthalf.com> domain name was registered and is being used to profit from user confusion, it finds bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent’s diversion of its potential visitors to an inactive page disrupts its business. Use of a disputed domain name to host an inactive webpage is evidence of bad faith use and registration. See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). Here, Complainant provides a screenshot of a web browser attempting to connect to the disputed domain name that shows the site cannot be reached. See Compl. Ex. 2. The Panel therefore concludes that the disruption to Complainant’s business justifies a finding of bad faith under Policy ¶ 4(b)(iii) which the Panel makes.
Thirdly, Complainant also submits that a finding of bad faith is justified because Respondent had actual or constructive knowledge of Complainant’s rights in the famous ROBERT HALF mark, as evidenced by its inclusion of the mark in the disputed domain name in its entirety. Panels have referred to the inclusion of an entire well-known mark in a domain name when evaluating whether a respondent registered and is using a domain name in bad faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). The use of an entire domain name may also indicate that a respondent has actual knowledge of a complainant’s rights. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). If a mark is famous, this may also indicate actual knowledge of the trademark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). In this case, in addition to the mark wholly incorporated into <mybenefitsroberthalf.com>, the Panel finds that Respondent included the descriptive words “my” and “benefits” which relate to one of Complainant’s services. The Panel also notes the international presence and well-known nature of the ROBERT HALF mark. As the Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark, the Panel finds bad faith registration of the mark within the meaning of Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that because the <mybenefitsroberthalf.com> domain name resolves to an inaccessible and inactive site, Respondent registered the name and is acting in bad faith. Panels have agreed, finding that nonuse of a domain name is evidence of bad faith. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, Complainant provides a screenshot of a web browser attempting to connect to the disputed domain name that shows the site cannot be reached. See Compl. Ex. 2. Therefore, the Panel finds that the resolving site is not in use when analyzing Policy ¶ 4(a)(iii), supporting a finding of bad faith registration and use which the Panel makes.
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the ROBERT HALF mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mybenefitsroberthalf.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: December 3, 2022
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