Robert Half International Inc. v. WeAllSay.Gay / WE ALL SAY LLC
Claim Number: FA2306002050855
Complainant is Robert Half International Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is WeAllSay.Gay / WE ALL SAY LLC (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roberthalf.gay>, registered with Google LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to Forum electronically on June 27, 2023; Forum received payment on June 27, 2023.
On June 27, 2023, Google LLC confirmed by e-mail to Forum that the <roberthalf.gay> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 July 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2023 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.gay. Also on July 5, 2023, 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.
A timely Response was received and determined to be complete on July 31, 2023.
On July 7, 2023 Complainant`s first Additional Submission was received.
On July, 10 Respondent`s Additional Submission (Other Correspondence via e-mail) was received – since it did not comply with the Rules or the Supplemental Rules it was thus not considered by the Panel as a due Response.
On July 12, 2023 Complainant`s second Additional Submission was received.
On August 4, 2023 Complainant`s third Additional Submission was received.
On August 10, 2023 Respondent`s Additional Submission was received.
On August 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in marks incorporating ROBERT HALF in jurisdictions around the globe, including in Argentina, UAE, Brazil, China, Canada, the EU, and the United States. A number of these marks and registrations predate the filing date of the Disputed Domain Name by more than a decade.
Complainant submits that the Disputed Domain Name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant alleges that Respondent registered and used the Disputed Domain Name in bad faith.
B. Respondent
The Respondent, We All Say LLC, in its Response explains that the use of the Disputed Domain Name does not intend to mislead or confuse Internet users as it does not offer the same products and services as Complainant. It accurately reflects the content and purpose of We All Say’s website. Furthermore, .gay domains were specifically created to ban and remove hate, including homophobia and transphobia.
We All Say LLC registered and has been using the Disputed Domain Name in connection with a legitimate website that offers commentary and criticism around the current political attacks toward LGBTQIA+ people. More specifically, it was created in response to Governor Ron DeSantis and his support of "Don't Say Gay legislation" in Florida and will examine corporations that donate(d) funds to Ron DeSantis, The Republican Party of Florida, and/or The Republican National Committee to which the Complainant has contributed and is a matter of public record.
Furthermore, in the future, the website will offer more information and express opinions about corporations that publicly support Pride and the LGBTQIA+ community but make financial and political decisions that undermine the LGBTQIA+ community. The use of the domain name does not intend to mislead, divert consumers, or confuse Internet users as it does not offer the same products and services as Complainant.
On July 6, 2023, Respondent offered to remedy Complainant’s concerns and to transfer the disputed domain name in lieu of a $1200 settlement fee, 10% of which would be donated to a LGBTQIA+ charity. We All Say did not approach Complainant to sell the domain but, rather, offered to settle any alleged dispute after Complainant initiated this process less than three months after the domain was purchased. The Complainant rejected to negotiate a settlement.
C. Additional Submissions
Complainant
Complainant in its Additional Submissions states that Respondent has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name. Respondent’s statement “I propose a $1200 settlement fee” is evidence of Respondent’s bad faith.
In this case, Respondent had actual knowledge of Complainant and its ROBERT HALF Marks before registering the Disputed Domain Name. After Respondent’s identity was disclosed to Complainant following the filing of the Complaint, Complainant identified Respondent, Ryan Patrick Kelley, as a former Robert Half International Inc. job candidate from 2013 until as recently as 2021. In light of this, it is indisputable that Respondent had actual knowledge of Complainant and its ROBERT HALF Marks, and in particular, the well-known ROBERT HALF house mark, before registering the Disputed Domain Name, which was registered two years after Respondent was an active RH job candidate. Accordingly, Complainant submits that Respondent registered and uses the Disputed Domain Name in bad faith.
Complainant submits that Respondent incorrectly contends that its use of the Disputed Domain Name is allegedly protected by the First Amendment since free speech cannot be used as a defense against the use of a confusingly similar mark in a domain name. Complainant takes no issue with Respondent’s operation of an organization that legally supports efforts to advance and promote the rights of LGBTQIA+ individuals. But Respondent cannot do so by squatting on Complainant’s goodwill it has spent years developing.
Also, Complainant notes that the Panel should only consider the Respondent’s conduct at the time the Complaint was filed. Indeed, the Disputed Domain Name did not contain any political commentary whatsoever, including any commentary relating to the “Don’t Say Gay legislation” or Ron DeSantis. Such use at the time the Complaint was filed does not amount to a bona fide use or any legitimate or noncommercial fair use under the Policy, including First Amendment protected use.
Respondent
Respondent believes Complainant fails to satisfactorily argue all three of
mandatory elements prescribed by UDRP.
Complainant's assertions that the Disputed Domain Name is confusingly similar to the ROBERT HALF Marks fail to consider the context and purpose of the domain, which were outlined in the original response.
While Complainant emphasizes the surface similarity, they disregard the specific community, content, and audience the domain serves. The use of the “.gay” top-level domain (TLD) specifically targets and caters to the LGBTQIA+ community, a distinguishing factor that minimizes confusion with ROBERT HALF's professional staffing and business consulting services
Complainant asserts that the Panel should only consider Respondent's conduct at the time the Complaint was filed. To that end, it’s well documented that the formation of We All Say LLC, registration of the domain, existence of the website, as well as the redirect all predate the Complaint. This being established, however, Respondent maintains political commentary is inherently dynamic and could not find any UDRP policies, rules, or precedents requiring individuals to fully deliver upon a concept before a certain amount of time in order to retain their Free Speech and Fair Use right to a domain name.
Furthermore, Respondent reserves all rights to continue creating commentary and needn’t directly name Complainant – nor do so within an arbitrary deadline – to satisfy the litmus test of Free Speech and Fair Use.
Respondent asserts that Complainant's arguments and interpretations are insufficient to establish all three criteria to force a transfer as required under the UDRP Policy.
1. The Disputed Domain Name serves a legitimate, non-commercial purpose unrelated to Complainant's business and well within Respondent’s Free Speech and Fair Use rights.
2. Registration, development, and use of the domain were all underway well before the Complaint was filed and remain consistent with the organization’s previously stated mission statement supporting the values and interests of the LGBTQIA+ community asit pertains to commentary around the intersection of politics and “corporate America.”
3. Respondent requests that the Panel reject Complainant's request for transfer and affirm Respondent's registration and use of the Disputed Domain Name.
The Complainant in this proceeding is Robert Half International Inc., who is one of the world’s largest specialized employment staffing agencies. Since its founding in 1948, Complainant has provided its clients with skilled professionals in the fields of accounting and finance, technology, legal, creative, marketing, and administration.
We All Say LLC registered and has been using the domain name roberthalf.gay in connection with a legitimate website that offers commentary and criticism around the current political attacks toward LGBTQIA+ people. More specifically, it was created in response to Governor Ron DeSantis and his support of "Don't Say Gay legislation" in Florida and will examine corporations that donate(d) funds to Ron DeSantis, The Republican Party of Florida, and/or The Republican National Committee to which the Complainant has contributed and is a matter of public record.
There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
The Disputed Domain Name was registered on or about April 18, 2023.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry — a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant’s registrations for its ROBERT HALF Marks firmly establish Complainant’s rights to the marks, as “the registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark.” Target Brands, Inc. v. JK Internet Services, FA 349108 (Forum Dec. 14, 2004).
In this case, the Disputed Domain Name, <roberthalf.gay> is identical in appearance, sight, sound, and connotation to Complainant’s ROBERT HALF Marks, and in particular, the six well-known ROBERT HALF house mark, and RH’s official domain name. The Disputed Domain Name incorporates Complainant’s entire, identical well-known ROBERT HALF house mark and merely adds the generic top level domain extension “.gay.” This addition is wholly inadequate to negate the confusing similarities between the Disputed Domain Name and the ROBERT HALF Marks. The use of Complainant’s entire, identical well-known ROBERT HALF house mark is inadequate to negate any confusing similarities between the Disputed Domain Name and the ROBERT HALF Marks. It is well-settled that a domain name which contains complainant’s entire, identical mark is considered to be identical and/or confusingly similar under Policy ¶ 4(a)(i). Lockheed Martin Corporation, FA 1987346 (Forum Apr. 6, 2022) (finding the domain confusingly similar to Complainant’s LOCKHEED mark); The Farm Creative/Productions, Inc. v. Job 1 Systems, Inc., FA 97637 (Forum July 24, 2001) (finding Policy ¶ 4(a)(i) satisfied given that the disputed domain name is identical to complainant’s mark for THE FARM); Hormel Foods Corporation and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Forum July 31, 2000) (finding Policy ¶ 4(a)(i) satisfied given that the disputed domain name is identical to complainant’s mark for KID’S KITCHEN); Muggles Magical Toys, Inc. v. muggles.org, FA 94798 (Forum July 24, 2000) (finding Policy ¶ 4(a)(i) satisfied given that the disputed domain name is identical to complainant’s mark for MUGGLES); Heel Quik, Inc. v Michael H. Goldman & Barbara S. Goldman, FA 92527 (Forum Mar. 2, 2000) (finding Policy ¶ 4(a)(i) satisfied given that the disputed domain name is identical to complainant’s mark for HEEL QUICK); Syncrude Canada Ltd. v. Jinunet.com a/k/a Shindug Choi, FA 99586 (Forum Oct. 10, 2001) (finding Policy ¶ 4(a)(i) satisfied given that the disputed domain name is identical to Complainant’s mark for SYNCRUDE). In addition, “[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Forum Sept. 23, 2002). Thus, Respondent’s addition of the generic top-level domain extension “.gay” does nothing in this case to negate confusing similarity.
Respondent’s stated motive for registering the Disputed Domain Name to “ban and remove hate, including homophobia and transphobia” does not negate the confusing similarity between the Disputed Domain Name and the ROBERT HALF Marks where the Disputed Domain Name uses the entire, identical ROBERT HALF mark.
The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant makes out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name, and then the burden shifts to Respondent to demonstrate it does, in fact, have rights or legitimate interests in the Disputed Domain Name (Rockport Co. v. Marcelo, FA 1709459 (Forum Feb. 2, 2017); (Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
Respondent has no rights or legitimate interests in the Disputed Domain Name because (i) Respondent is not commonly known by the Disputed Domain Name or any derivation of the same; and (ii) Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods/services, nor does it constitute a non-commercial use or fair use of the Disputed Domain Name.
To Complainant’s knowledge, neither Respondent nor any person or entity associated therewith are commonly known as ROBERTHALF.GAY, ROBERT HALF GAY, or any other derivation of the same. Neither is Respondent nor any person or entity associated therewith a licensee or affiliate of Complainant, nor are they otherwise authorized to use or register the ROBERT HALF Marks in any manner, including in the Disputed Domain Name.
Respondent can show no bona fide use nor any legitimate non-commercial or fair use of the Disputed Domain Name. The Disputed Domain Name automatically redirects visitors to an active website containing content unrelated to Complainant’s staffing and business consulting services.
Respondent makes various assertions and arguments to support its entitlement to use and register the Disputed Domain Name, including that the Disputed Domain Name resolves to a website that offers commentary and criticism around the current political attacks towards the LGBTQIA+ community. In particular, Respondent asserts that the purpose of the Disputed Domain Name is to amplify LGBTQIA+ issues and rights through public commentary and corporate criticism and, therefore, Respondent’s use of the Disputed Domain Name is protected by free speech. However, there is simply no connection between the ROBERT HALF Marks and the LGBTQIA+ content found on the resolving webpages. The political content on the resolving website does not make Respondent’s use fair or non-commercial. See Gruner + Jahr Printing & Publg. Co. v. Savior Baby, D2000-1741 (WIPO Feb. 21, 2001) (finding use of magazine’s trademark for anti-abortion political content did not “make the domain names fair use, since there is no connection between the domain names and the subject matter of the websites they resolve to”).
Thus, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
As a general matter, the types of evidence demonstrating bad faith registration and use are set out in UDRP Policy ¶ 4(b)(i)-(iv):
(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
However, these examples are not exhaustive of all circumstances from which bad faith can be found. Robert Half Int’l Inc. v. Fuller, FA 1764368 (Forum Feb. 6, 2018) (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found.”).
Actual knowledge of Complainant’s rights prior to registering the domain name is adequate evidence of bad faith under the Policy. Toshiba Corporation v. MengNi, FA 1747411 (Forum Oct. 3, 2017). Actual knowledge can be proved through the totality of circumstances surrounding the registration of the disputed domain name. Robert Half Int’l Inc., FA 1764368 (“Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name.”). The evidence and the totality of the circumstances surrounding the use and registration of the Disputed Domain Name undoubtedly demonstrates that Respondent had actual knowledge of Complainant and its ROBERT HALF Marks, and in particular, the well-known ROBERT HALF mark, before registering the Disputed Domain Name. Complainant has continuously and exclusively used the ROBERT HALF Marks since at least as early as 1948, and since then, Complainant and its various ROBERT HALF Marks have become well-known and have established notoriety and goodwill in the worldwide marketplace. In light of this, it is inconceivable that Respondent did not have actual knowledge of Complainant and its rights in the ROBERT HALF Marks before registering the Disputed Domain Name more than seventy (70) years after Complainant first used the ROBERT HALF mark. Further, upon information and belief, the registrant organization WE ALL SAY LLC is owned and controlled by Ryan Patrick Kelley, an individual who applied for a job with RHI in 2013 and, as such, was clearly aware of Complainant and its trademarks. This evidence and the totality of these circumstances inescapably establish that Respondent registered and is using the Disputed Domain Name in bad faith. Nevertheless, Respondent was, at a minimum, placed on constructive notice of Complainant’s claim of exclusive rights in its ROBERT HALF Marks by virtue of registration of such marks with the U.S. Patent and Trademark Office, many of which were notably used and registered well prior to the registration of the Disputed Domain Name. See Orange Glo International, Inc. v. Jeff Blume, FA 118313 (Forum Oct. 4, 2002) (finding that registering a domain name with constructive knowledge of a confusingly similar USPTO registration constitutes bad faith under Policy ¶ 4(a)(iii).
Also, it is well-settled that a respondent’s offer to sell a disputed domain name in excess of out of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i). See Hexarmor, Limited Partnership v. Anthony Weiner, FA 2018279 (Forum Dec. 1, 2022) (finding respondent’s offer to sell the disputed domain name for $1,450 clearly exceeds the normal costs directly related to the disputed domain name, and respondent’s conduct thus fits within the circumstances described in Policy ¶ 4(b)(i); See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); Phillips 66 Company v. shahar wiezman, FA 2012381 (Forum Oct. 4, 2022) (“An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i).”); Regal Beloit Corporation v. JH Kang, FA 1957432 (Forum Aug. 25, 2021) (“Complainant provides evidence showing that Respondent offered to sell the disputed domain name for a price in excess of out-of-pocket costs; State Farm Mutual Auto. Ins. Co. v. Donghui, FA 1594582 (Forum Jan. 12, 2015) (finding bad faith use and registration of the disputed domain names where respondent offered to sell the two disputed domain names to complainant trademark-owner for $800 each because the offer was “obviously in excess of respondent’s out-of-pocket costs associated with the disputed domain names”).
Thus, the Panel finds registration and use of the Disputed Domain Name in bad faith.
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.gay> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Antonina Pakharenko-Anderson, Panelist
Dated: August 15, 2023
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