Robert Half International Inc. v. Amend gelditu / Dante mandate
Claim Number: FA2211002021415
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is Amend gelditu / Dante mandate (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on November 22, 2022; Forum received payment on November 22, 2022.
On November 22, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@roberthalf-recruit.com, postmaster@roberthalf-ww.com, postmaster@roberthalfcalendar.com. Also on November 29, 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 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that notwithstanding differences in the domain registration records for the at-issue domain names such domain names are nevertheless effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name leads with Complainant’s trademark followed by generic or descriptive terms and then by the “.com” top-level. The domain names were all registered within a four day period through the same domain name registrar. Two domain names have the same registrant. Each nominal registrant resides in Germany. Further, all three domains names are linked to common email phishing scheme. While it is possible that the domain names’ underlying registrants may or may not differ in the relevant WHOIS data, the at-issue domain names appear to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s contention that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel will treat the domain names’ registrants as one for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant, Robert Half International Inc. is an employment staffing agency.
Complainant asserts rights in the ROBERT HALF mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s
<roberthalf-recruit.com>, <roberthalf-ww.com>, and
<roberthalfcalendar.com> are each confusingly similar to Complainant’s ROBERT
HALF trademark because they each include
the mark in its entirety and add a hyphen, the generic and descriptive words “recruit”
and “calendar”, the letters “ww” and the generic top-level domain name (“gTLD”)
“.com”.
Respondent does not have rights or legitimate interests
in the at-issue domain names. Respondent is not licensed or authorized to use
Complainant’s ROBERT
HALF mark and is not commonly known by any
of the at-issue domain names. Respondent also does not use any of the at-issue domain
names for any bona fide offering of goods or services or legitimate
noncommercial or fair use. Rather, Respondent attempts passing off as
Complainant in furtherance of a phishing scheme. Respondent also offers
competing hyperlinks.
Respondent registered and uses the at-issue domain names in bad faith. Respondent passes itself off as Complainant for commercial gain to further a scheme to defraud. Respondent is also offerings competing hyperlinks. Respondent had actual or constructive knowledge of Complainant’s rights in the ROBERT HALF mark when it registered the at-issue domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ROBERT HALF trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in ROBERT HALF trademark.
Respondent uses the at-issue domain name purports to offer services which directly compete with Complainant’s offering.
Respondent uses the at-issue domain name to pass itself off as Complainant in furtherance of a phishing scheme and to display hyperlinks to third parties.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the ROBERT HALF mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names each contain Complainant’s ROBERT HALF trademark less its domain name impermissible space, followed by a hyphen and generic term, or just a generic term i.e. “-recruit” or “-ww” or “calendar” and with all followed by the “.com” top-level domain name. The differences between each at-issue domain name and Complainant’s ROBERT HALF trademark are insufficient to distinguish any of the at-issue domain names from ROBERT HALF for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names are each confusingly similar to Complainant’s ROBERT HALF trademark. 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, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
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 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 any at‑issue domain name.
The WHOIS information for the at-issue domain names identifies their individual registrants as “Amend gelditu” and “Dante mandate” and record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Respondent uses the at-issue domain names to promote a phishing scheme. All three domain name are used by Respondent posing as the director of marketing for Complainant who contacts various customers of Complainant and requested that such customers contact and/or schedule an interview. Two of the confusingly similar at-issue domain names are used as domain level email addresses and the other, <roberthalfcalendar.com>, is used to address a website that allows the targeted customers/third parties to schedule bogus interviews with Respondent (posing as Complainant). Respondent’s use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). The domain names also address webpages displaying Complainant’s trademark and containing competing hyperlinks. Such use is likewise not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names were each registered and used in bad faith. As discussed below without being exhaustive, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
By misappropriating Complainant’s trademark and other intellectual property to use in its domain names, associated websites, and email address as discussed above, Respondent passes itself off as Complainant in furtherance of fraud. Respondent deliberately set out to confound internet users as to the sponsorship of its online fraudulent endeavors so it might interrogate third parties by pretending to be Complainant. Respondent’s use of the at-issue domain names to deceive internet users disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also 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 per Policy ¶ 4(b)(iv)). The fact that Respondent is engaging in email phishing, in itself, shows Respondent’s bad faith registration and use of the at-issue domain names. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).
Next and as also mentioned above, the at-issue domain names address websites hosting generic hyperlinks. Such use of the domain names also is demonstrative of Respondent’s bad faith registration and use of the domain names. See Rush Univ. v. Guilbault, FA1707001740743 (Forum Aug. 30, 2017) (“Inclusion of pay-per-click hyperlinks, even if the registrant is not directly responsible for such links, often constitutes prima facie evidence of bad faith.”).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in the ROBERT HALF trademark. Respondent’s prior knowledge is evident given ROBERT HALF’s wide notoriety, and given the fact that Respondent registered multiple domain names containing Complainant’s ROBERT HALF mark as part of a common scheme to pass itself off as Complainant in furtherance of fraud. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <roberthalf-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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-recruit.com>, <roberthalf-ww.com>, and <roberthalfcalendar.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 22, 2022
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