DECISION

 

Robert Half Inc. v. mike hundsman / offiiceteam.com

Claim Number: FA2410002120371

 

PARTIES

Complainant is Robert Half Inc. ("Complainant"), represented by Emily Ostreich of Foley & Lardner LLP, New York, USA. Respondent is mike hundsman / offiiceteam.com ("Respondent"), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <offiiceteam.com>, registered with Squarespace Domains II 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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 14, 2024; Forum received payment on October 14, 2024.

 

On October 15, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <offiiceteam.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 October 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 6, 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@offiiceteam.com. Also on October 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.

 

Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is one of the world's largest specialized employment agencies. It has rights in the OFFICETEAM mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). The <offiiceteam.com> domain name is identical or confusingly similar to Complainant's mark in that it fully incorporates the mark, merely adding an "i" after the second "f," which amounts to typosquatting, and a generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not affiliated with Complainant and Complainant has not authorized it to use its mark, Respondent is not commonly known by the domain name, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair purpose but instead is making no active use of it.

 

Respondent registered the domain name in bad faith. It registered the domain name with actual knowledge of Complainant and its rights in its mark, it is making no active use of the domain name, and it has configured the domain name to be used for email, suggesting a fraudulent phishing scam.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  as true unless the evidence is clearly contradictory. 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). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The OFFICETEAM mark was registered to Complainant with the USPTO (Reg. No. 1,694,787) on June 16, 1992 (TESS printout included in Complaint Exhibit 3). Complainant's USPTO registration of its mark establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <offiiceteam.com> domain name is identical or confusingly similar to Complainant's OFFICETEAM mark. It fully incorporates the mark, merely misspelling it by adding an extra letter "i" next to the existing "i" and a gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Netflix, Inc. v. Savvy Investments, LLC Privacy ID# 972699, FA 1847634 (Forum July 13, 2019) (finding the addition of the letter "i" to complainant's mark along with the generic top-level domain ".com" insufficient to distinguish the disputed domain name from complainant's trademark), Ecolab USA Inc. v. Jason Skolovo / H-Madix Infortec, FA 1872953 (Forum Dec. 19, 2019) ("Adding a single letter to create a misspelling of a mark is insufficient to negate confusing similarity.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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."). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not affiliated with Complainant and Complainant has not authorized it to use its mark, (ii) Respondent is not commonly known by the domain name, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair purpose but instead is making no active use of it.  These allegations are addressed as follows:

 

Complainant states that Respondent is not affiliated with it and that it has not authorized Respondent to use its mark (Declaration of Complainant's Director for Brand submitted with Complaint). Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name); Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the 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 the at-issue domain name.").

 

The WHOIS information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. The first of these names, mike hundsman, bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain name when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent mike hundsman has not been commonly known by the domain name.

 

The second respondent name, offiiceteam.com, is identical to the domain name, suggesting that Respondent may have been commonly known by the domain name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant's mark, and the evidence before the Panel gives no indication that Respondent has used the "FWRD Group" name for any purpose other than to register the domain name. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent "has been commonly known by" it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration and any resolving website, that the respondent used the name in a business or some other legitimate undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) by the simple expedient of registering it in a name similar or identical to the domain name, the purpose and intent of Policy ¶ 4(c)(ii) could easily be circumvented and the paragraph rendered essentially meaningless. Augusta National, Inc. v. Ryan Carey, FA 1758547 (Forum Dec. 21, 2017) ("If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant's mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated."), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The Panel is satisfied that Respondent officeteam.com has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii). 

 

Complaint Exhibit 2 is a screenshot of the web page resolving from the domain name. The only substantive content on this page is the message "This site can't be reached."  There is no evidence of any effort to develop an active legitimate presence at this site. Respondent is making no legitimate active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server").  Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(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 which 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site 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 web site or location or of a product of service on the respondent's web site or location.

 

As discussed above, the evidence demonstrates that Respondent is making no active use of the domain name, that it is passively holding it. This does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii).  Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The mere fact of passive holding does not automatically result in a finding of bad faith. The concept of bad faith as illustrated in the four subparagraphs of Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the fanciful or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

In cases such as this, where the domain name is being passively held and no Response has been filed, it is not always easy to determine whether the respondent registered and has been using the domain name with actual knowledge of the complainant and its rights in the mark. In this case, however, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in September 2024 (WHOIS printout submitted as Complaint Exhibit 1 shows creation date). Complainant has been using its OFFICETEAM mark since 1991 and has successfully obtained trademark registrations for it throughout the world, including in Australia, China, Mexico, the EU, and the United States (Declaration of Complainant's Director for Brand submitted with Complaint).  More tellingly, the OFFICETEAM mark is unique, a coined term which has no meaning apart from its association with Complainant. It is not likely to be selected for inclusion in a domain name by someone other than Complainant except to target this Complainant. Respondent's selection of the domain name was no happenstance. Respondent registered the domain name with actual knowledge of Complainant's mark.

 

Since the Policy requires a complainant to prove both registration and a continuing use in bad faith, the question next arises whether Respondent's passive holding of the domain name constitutes a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use.  Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, there is no evidence that Respondent is holding or using the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already found that Respondent had actual knowledge of Complainant and its rights in the ROBERT HALF mark when it registered the domain name, and that knowledge certainly continues. Also, Respondent is holding the domain name, which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its products. This in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA 1879162 (Forum Mar. 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights, especially since they suggest operations in the same market segment as that in which Complainant operates. Respondent's passive holding of the domain name constitutes a continuing use in bad faith within the meaning and for the purposes of Policy ¶ 4(a)(iii).

 

Further, by misspelling Complainant's mark with two "i"s immediately next to each other in the domain name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. This also does not fit within any of the circumstances set forth in Policy ¶ 4(b) but in light of the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant's mark with small typographical errors introduced therein).

 

Complaint alleges without offering any evidence in support that Respondent has prepared to establish an email account based upon the domain name. Complainant speculates that Respondent could use the domain name for fraudulent phishing emails. To be sure, the potential for such use exists, and it is not possible to imagine any use Respondent could make of an email account based upon the domain name that would be in good faith or have a legitimate purpose. Nevertheless, Policy ¶ 4(a)(iii) requires proof that the domain name "is being used" in bad faith. While the circumstances present here raise legitimate concern about might happen in the future, there is no evidence that this use is actually occurring, no evidence that Respondent is using or will use the domain name to send fraudulent emails. Complainant's allegations about fraudulent emails are not proven. 

 

For the reasons first set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

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 <offiiceteam.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

Dated: November 8, 2024