DECISION

 

Team-One Employment Specialists, LLC v. Christian Valdez / TeamOne Staffing

Claim Number: FA2401002078854

 

PARTIES

Complainant is Team-One Employment Specialists, LLC ("Complainant"), represented by Rod S. Berman, Jessica Bromall Sparkman, and Celine Ohanian of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Christian Valdez / TeamOne Staffing ("Respondent"), represented by Jon Ustundag of Atkinson, Andelson, Loya, Ruud & Romo, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <teamonestaffing.biz> and <teamonestaffingllc.com> (the "Disputed Domain Names"), registered with, respectively, Tucows Domains Inc. and GoDaddy.com, LLC.

 

PANEL

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.

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 11, 2024; Forum received payment on January 11, 2024.

 

On January 12, 2024, Tucows Domains Inc. and GoDaddy.com, LLC and confirmed by e-mail to Forum that the <teamonestaffing.biz> and <teamonestaffingllc.com> domain names are, respectively, registered with GoDaddy.com, LLC and Tucows Domains Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Tucows Domains Inc. have verified that Respondent is bound by the GoDaddy.com, LLC and Tucows Domains Inc. registration agreements 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 January 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024, 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@teamonestaffing.biz and postmaster@teamonestaffingllc.com. Also on January 17, 2024, 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 February 12, 2024.

 

On February 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Douglas M. Isenberg as Panelist.

 

On February 23, 2024, Complainant submitted a supplemental filing.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS

In its Complaint, Complainant stated that "Complainant has initiated a lawsuit against TeamOne Staffing Solutions, LLC, which includes claims for trademark infringement and unfair competition (15 U.S.C. §§ 1114, 1125(a)) and cyberpiracy (15 U.S.C. § 1125(d)), which claims rest, in part, on TeamOne Staffing Solutions, LLC's use of" the domain name <teamonestaffing.biz>. In its Response, Respondent apparently acknowledged that Respondent is the same entity as in the lawsuit referenced by Complainant and that "[t]he lawsuit encompasses virtually the same domain name dispute identified in the Complaint before the Forum." Respondent then requested that Forum "terminate or, in the alternative, suspend this proceeding in view of the pending district court litigation for an efficient and streamlined resolution of this domain name dispute that ensures efficient use of resources and mitigates unnecessary and costly duplication of efforts." In its supplemental filing, Complainant noted that the lawsuit does not relate to the domain name <teamonestaffingllc.com> (which Complainant states it learned about only after it filed its complaint in court) and stated that suspension of this proceeding under the Policy would be "inappropriate" because "[n]umerous panels have proceeded despite a concurrent court proceeding, particularly where, as here, the court proceeding is about much wider issues than those before panel and the court proceeding will take a considerable period of time to adjudicate."

 

As set forth in paragraph 18(a) of the Rules: "In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."

 

Section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") says: "Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding."

 

Accordingly, the Panel here chooses not to suspend or terminate this proceeding but instead will issue a decision as set forth below.

 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states, and provides evidence to support, that it is the owner of the trademark TEAM ONE (the "TEAM ONE Trademark"), which is protected by the following registrations in the United States (which it says "represent only a fraction of the marks and registrations to which Complainant owns exclusive rights worldwide" – although Complainant provides no additional registration numbers, only an unsupported reference to "active trademark registrations for the TEAM ONE Mark in Europe, the Netherlands, and Great Britain"):

 

·       U.S. Reg. No. 2,7412,46 for TEAM ONE (registered July 29, 2003) for use in connection with "employment agencies; temporary employment agencies; employment counseling and recruiting; employment outplacement services; personnel placement and recruitment; business consultation in the field of personnel management"; and

·       U.S. Reg. No. 4,030,343 for TEAM ONE & Design (registered September 27, 2011) for use in connection with "[e]mployment agencies; temporary employment agencies; employment counseling and recruiting; employment outplacement services; personnel placement and recruitment; business consultation in the field of personnel management"

 

Complainant provides no further information about its business other than a statement that the TEAM ONE Trademark "is well known for providing employment agency and staffing services" and that Complainant "has been recognized as one of the Top 500 Largest Hispanic Owned Businesses in the U.S., and for at least seven years, has been recognized as one of the Tope [sic] 100 Largest Hispanic Owned Business in the U.S."

 

Complainant does not state when the Disputed Domain Names were registered, but the Panel has obtained whois records showing that the domain <teamonestaffing.biz> was created on October 4, 2022, and the domain name <teamonestaffingllc.com> was created on May 4, 2020.¹

 

Complainant states that the Disputed Domain Names are used "in connection with [Respondent's] operation of a staffing services business that competes directly with Complainant" and that "Respondent deliberately selected the Domain Names for the purpose of trading [on] the Complainant's reputation for excellence and the goodwill it has developed in its TEAM ONE Mark."

 

Complainant argues that each of the Disputed Domain Names is confusingly similar to the TEAM ONE Trademark because they contain "the entirety of Complainant's TEAM ONE Mark combined with the generic term[s]" "staffing" and "llc," which are "insufficient to distinguish the Domain Names" from the TEAM ONE Trademark.

 

Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Names because, inter alia, Respondent "uses the Domain Names to divert Internet users to its websites for its competing staffing services business by confusing them into believing that some connection or affiliation exists between Complainant and Respondent"; and "Respondent has never been, licensed or otherwise authorized to use the Domain Names or Complainant's TEAM ONE Mark."  In its supplemental filing, Complainant states that "[a] perfunctory search of the [United States Patent and Trademark Office] – at any time in the last twenty years – would have revealed Complainant's federal trademark registration for the TEAM ONE Mark" and "[a] perfunctory Google search for 'team one staffing' would have revealed numerous references to Complainant, its staffing services, its teamone.com and teamone.la domain names."

 

Complainant argues that Respondent has registered and is using the Disputed Domain Names in bad faith because, inter alia, "Complainant's TEAM ONE Mark is well known for providing employment agency and staffing services" and "Respondent is using the Domain Names and Respondent's websites in connection with its operation of a staffing services business that competes directly with Complainant"; "Respondent deliberately selected the Domain Names for the purpose of trading [on] the Complainant's reputation for excellence and the goodwill it has developed in its TEAM ONE Mark"; "Respondent has registered, and is using, the Domain Names in an attempt to, for its own profit, attract Internet users to its website by creating a likelihood of confusion with Complainant's TEAM ONE Mark and Complainant's genuine TEAM ONE website, which operates at teamone.la and teamone.com," which "use is intended to confuse, and is likely to confuse, consumers as to the source, sponsorship, affiliation, or endorsement of Respondent's Website and the staffing services offered thereon."  In its supplemental filing, Complainant argues that Respondent should have conducted a trademark search prior to registering the Disputed Domain Names and appears to argue that the Panel should reject Respondent's claim that it was unaware of the TEAM ONE Trademark when it registered the Disputed Domain Names because Respondent is engaged in the same business as Complainant.

 

B. Respondent

Respondent provides no information about its business.

 

Respondent argues that the Disputed Domain Names are not confusingly similar to the TEAM ONE Trademark because, inter alia, "[t]he Domain Names are different in at least appearance and sound" and each of the Disputed Domain Names "have additional elements that render the length of the phrases, pronunciation, and overall impression different from the TEAM ONE Mark."

 

Respondent argues that it has rights and legitimate interests in the Disputed Domain Names because, inter alia, Respondent "performed reasonable due diligence before choosing an available business entity name in his home state of New Jersey… finding that 'TeamOne Staffing Solution LLC' was available"; after becoming aware of the complaint that Complainant filed against Respondent in federal court, "[i]n a showing of good faith and willingness to amicably resolve the dispute, Respondents removed virtually all content from the websites linked to the Domain Names"; "the Domain Names are based on and include Respondents' registered business entity name 'TeamOne Staffing Solution LLC'"; and "[s]ince the Domain Names lead to empty pages, there can be no opportunity for commercial gain, misleading diversion of consumers, or tarnishing of the TEAM ONE Marks."

 

Respondent argues that is has not registered and used the Disputed Domain Names in bad faith because, inter alia, Complainant has made "baseless claims" "[w]ithout providing any evidence"; and "Respondents performed reasonable due diligence in registering a business entity based on an available name provided by the State of New Jersey to offer and perform temporary employment solutions to businesses, without having any knowledge about Complainant (who was situated thousands of miles away in the State of California), Complainant's business, or Complainant's marks."

 

FINDINGS

Complainant has failed to establish all three elements. As such, the Disputed Domain Names shall remain with Respondent.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the TEAM ONE Trademark, at least in the United States.

 

As to whether the Disputed Domain Names are identical or confusingly similar to the TEAM ONE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., "teamonestaffing" and "teamonestaffingllc") because "[t]he applicable Top-Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.

 

As set forth in section 1.7 of WIPO Overview 3.0: "in cases where a domain name incorporates the entirety of a trademark,… the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." Here, each of the Disputed Domain Names incorporates the entirety of the TEAM ONE Trademark, simply adding the words "staffing" and "llc."  As set forth in section 1.8 or WIPO Overview 3.0: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."

 

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

 

Rights or Legitimate Interests

Given the Panel's finding with respect to paragraph 4(a)(iii) of the Policy, below, the Panel declines to make a finding with respect to paragraph 4(a)(ii), as doing so is unnecessary to the Panel's decision.

 

However, with respect to Respondent's assertion that it registered the Disputed Domain Name only after it found "an available business entity name in his home state of New Jersey," the Panel notes that corporate registrations are typically insufficient to establish rights or legitimate interests. See, e.g., Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 ("proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name").

 

Further, with respect to Respondent's decision to "remove[] virtually all content from the websites linked to the Domain Names" after the Complaint was filed, the Panel notes that this is irrelevant. See, e.g., Rolf C. Hagen (USA) Corp. v. Domain Administrator, WIPO Case No. D2003-0855 (giving no consideration to the fact that "Respondent has changed its use subsequent to the filing of the Complaint").

 

Registration and Use in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).

 

Here, Complainant does not specify in the Complaint which, if any, of the above factors establish bad faith in this case, although in its supplemental filing Complaint refers to paragraph 4(b)(iv) and cites four decisions in support thereof. However, the decisions are not determinative here. Complainant cites Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319, in support of its argument that "failure to conduct a trademark search is considered an element of bad faith"; however, the panel in that case found that the complainant had "a large reputation" in the relevant field, something that Complainant here has not established. Complainant cites GreenHeck Fan Corporation v. Siouzanna Terlitskaia, Forum Claim No. 1752889, for the proposition that "Respondents 'should have conducted a trademark search prior to the registration of the' Domain Names"; however, the quoted language is from a summary of the complainant's contentions and is not relied upon by the panel, which otherwise found that "Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name" – a fact that Respondent in this case appears to dispute. Complainant cites Andersen Corporation v. Dennis McHugh / Clear Window Technology, Inc., Forum Claim No. 1699253, for a similar proposition, yet again the panel in that case did not rely upon the need for a respondent to conduct a search before registering a domain name and instead referred to the fact that "Complainant's mark is well known" – a fact that Complainant has not established here. Finally, Complainant cites G.O. Corporation I, Inc. v. Damon DoRemus / JD Young, Forum Claim No. 1695886, in which Complainant says "the panel rejected a claim by the respondent that's [sic] its registration and use could not be in bad faith because it was unaware of the complainant and the complainant's mark"; however, the panel there found that "[i]t is clear that by [the date on which the disputed domain name was registered,] Respondent was on notice of Complainant's claimed trademark rights" – a fact that is unclear here.

 

Complainant has failed to establish that Respondent was aware, or even should have been aware, of the TEAM ONE Trademark when Respondent registered the Disputed Domain Name. As stated above, Complainant has provided evidence of only two trademark registrations for the TEAM ONE Trademark and has offered no details about the scope of its business using the TEAM ONE Trademark. Although some panels have applied the concept of constructive notice, in which a respondent is deemed to be aware of a complainant's trademark that was registered before creation of the disputed domain name, "[a]pplication of this concept may depend in part on the complainant's reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant's mark." WIPO Overview 3.0, section 3.2.2. Here, the record contains no information about the reputation, strength or distinctiveness of the TEAM ONE Trademark, and Respondent has expressly disclaimed any awareness of the trademark prior to registering the Disputed Domain Names.

 

Assessing whether Respondent's claimed ignorance of the TEAM ONE Trademark is credible is a task that is beyond the ability of the Panel in this proceeding, because "the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent's credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process." General Motors LLC v. Chad Clegg, WIPO Case No. D2012 2196 (citing Jumblatt v. SlantMedia, WIPO Case No. D2012-1011 ("[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names").

 

The Panel notes that this decision need not represent the final outcome to the dispute between the parties. Paragraph 5 of the Policy makes clear that a complainant and respondent retain the right to resolve their dispute "through any court, arbitration or other proceeding that may be available." Indeed, as noted above, Complainant has already filed a complaint in federal court with respect to one of the Disputed Domain Names (and, presumably, Complainant may be able to amend the Complaint to add the second Disputed Domain Name). In the court proceeding, the issues discussed above could be explored in ways that the Policy simply does not allow. "For good reason, this… process [under the Policy] is designed to be a fast track inexpensive process." Quoteseek Corporation v. Internet Marketing Group, WIPO Case No. D2002 0511. "Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, [and] live hearings. When … a party critically needs certain evidence available only by discovery forbidden by the [Policy's] parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court."

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <teamonestaffing.biz> and <teamonestaffingllc.com> domain names REMAIN WITH Respondent.

 

 

 

Douglas M. Isenberg, Panelist

Dated: February 26, 2024