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Generic Top Level Domain Name (gTLD) Decisions |
Robert Half International Inc. and Robert
Half Incorporated v. Digi Real Estate Foundation
Claim
Number: FA0411000360817
Complainant is Robert Half International Inc. and Robert Half Incorporated (“Complainant”), represented by Andrew Baum, of Darby & Darby, 805 Third Avenue, New York, NY 10022.
Respondent is Digi Real Estate
Foundation (“Respondent”), Post Office Box 7-5324, Panama City NA N7 8DJ,
Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwaccounttemps.com>, registered with Bizcn.com,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
3, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 4, 2004.
On
December 14, 2004, Bizcn.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <wwwaccounttemps.com> is
registered with Bizcn.com, Inc. and that Respondent is the current registrant
of the name. Bizcn.com, Inc. has verified that Respondent
is bound by the Bizcn.com,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties
in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
November 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@wwwaccounttemps.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification,
the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
December 20, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwaccounttemps.com>
domain name is confusingly similar to Complainant’s ACCOUNTEMPS mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwaccounttemps.com> domain name.
3. Respondent registered and used the <wwwaccounttemps.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant
Robert Half International Inc. is a specialized staffing firm and is a
recognized leader in professional staffing and
consulting services. Complainant
Robert Half Incorporated is a wholly-owned subsidiary of Robert Half
International Inc. Complainant
provides staffing support for accounting and
financial operations, supplying accounting managers, CPAs/CMAs, cost
accountants, financial
analysts, payroll professionals, credit managers,
bookkeepers, budget analysts, and tax accountants. Complainant has provided
these
services under the ACCOUNTEMPS mark continuously since 1973. Total
worldwide revenues under the mark during the fiscal years 1999-2003
inclusive
have exceeded $4 billion. Complainant has spent much time, money, and
effort in promoting its ACCOUNTEMPS mark in major
newspapers around the world.
Complainant owns several worldwide trademark registrations for the ACCOUNTEMPS
mark, including U.S.
Reg. Nos. 1,009,244 and 1,272,104 (issued March 27, 1984
and April 22, 1975, respectively). Complainant also operates a website at
the
<accountemps.com> domain name.
Respondent
registered the <wwwaccounttemps.com> domain name on July 31, 2004.
The domain name resolves to a website containing links to third-party websites
that provide staffing
services that compete with Complainant. Respondent is not
a licensee of Complainant nor is Respondent authorized to use Complainant’s
marks for any purpose.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established that it has rights in the ACCOUNTEMPS mark through registration
with the United States Patent and Trademark
Office and through continuous use
of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity,
which creates a
rebuttable presumption that the mark is inherently distinctive. Respondent has
the burden of refuting this assumption).
The <wwwaccounttemps.com>
domain name is confusingly similar to Complainant’s ACCOUNTEMPS registered
trademark because the disputed domain name merely
adds the “www” generic
acronym, the letter “t,” and the “.com” generic top-level domain to
Complainant’s mark. First, Respondent’s
addition of “www” to Complainant’s
mark, reflecting a common typing error made by Internet users, does not
distinguish the domain
name from the mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO
Dec. 23, 2002) (holding that the letters "www" are not distinct in
the "Internet world" and
thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark).
Furthermore,
Respondent’s intentional misspelling of the ACCOUNTEMPS mark by adding the
letter “t” does not distinguish the disputed
domain name from the mark.
Respondent’s “typosquatting” does not eliminate the confusingly similarity
between the domain name and
Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth
“w” or the omission of periods or other such
generic typos do not change respondent’s infringement on a core trademark held
by Complainant);
see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark); see
also Neiman Marcus Group, Inc. v. Party
Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (finding the disputed domain name was
a simple misspelling of Complainant’s mark and was
a classic example of
typosquatting, which “renders the
domain name confusingly similar to the altered famous mark”).
Finally, the
addition of the “.com” generic top-level domain does not distinguish the
disputed domain name from the ACCOUNTEMPS mark.
See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
(finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE
mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY
BY VICTORIA mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Further, because
Respondent has failed to submit a Response, Respondent has failed to propose
any set
of circumstances that could substantiate its rights or legitimate
interests in the disputed domain name. See Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which
could
demonstrate any rights or legitimate interests in the domain name); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in
the allegations of Complainant to be
deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name redirects
unsuspecting Internet users to a website that provides links to services that
are in competition
with Complainant’s staffing services. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from advertisers when Internet users follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark
in order to capitalize
on the goodwill and fame associated with the ACCOUNTEMPS moniker; thus,
Respondent fails to establish rights
or legitimate interests in the domain
name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr.
9, 2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally
and misleadingly diverting users away from
Complainant's site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation
of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS
information indicates that the
registrant of the disputed domain name is “Digi Real Estate Foundation” and not
the confusing second-level
domain that infringes on Complainant’s ACCOUNTEMPS
mark. Moreover, Respondent is not authorized or licensed to use Complainant’s
mark for any purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly
known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding,
LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by”
the name GIRLS GON WILD or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Although
Respondent’s registration and use of the subject domain name satisfies various
bad faith criteria under the Policy, the Panel
finds Respondent acted in bad
faith under Policy ¶ 4(b)(iv). Specifically, Respondent uses a confusingly
similar variation of Complainant’s
famous ACCOUNTEMPS mark within a domain name
to ensnare unsuspecting Internet users. Respondent then redirects the users to
its website,
which offers links to competing staffing services. The Panel
infers that Respondent commercially benefits from this diversion by
receiving
pay-per-click fees from advertisers when Internet users follow the links on its
website. Such infringement is what the
Policy was intended to remedy. See
AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“The
scope of an ICANN proceeding is extremely narrow: it only targets abusive
cybersquatting, nothing
else”); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent has
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet
users to businesses that offer
services that compete with those offered by Complainant. Respondent’s use of
the <wwwaccounttemps.com> domain name establishes that Respondent
registered the domain name for the purpose of disrupting the business of a
competitor pursuant
to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith
by attracting Internet users to a website that
competes with Complainant’s
business); see also EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from Complainant's marks suggests that
Respondent,
Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of
Policy ¶ 4(b)(iii)).
Respondent’s
addition of the “www” generic acronym and a single letter to Complainant’s
ACCOUNTEMPS mark, resulting in a domain name
that is confusingly similar to the
mark, is evidence of bad faith registration and use of the disputed domain
name. Respondent diverts
Internet users who accidentally mistype Complainant’s mark
to Respondent’s competing website. The Panel finds that Respondent engaged
in
the practice of typosquatting, and therefore finds that Respondent registered
and used the disputed domain name in bad faith pursuant
to paragraph 4(a)(iii)
of the Policy. See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with
intent to intercept and siphon off
traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is
inherently parasitic
and of itself evidence of bad faith”); see also Zone
Labs, Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (finding that Respondent registered and
used the <zonelarm.com> domain name in bad
faith pursuant
to Policy ¶ 4(a)(iii) because the name was merely a typosquatted
version of Complainant's ZONEALARM mark. "Typosquatting,
itself
is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).");
see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003)
(finding that the <dermatalogica.com> domain name was a typosquatted
version of Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy 4(a)(iii).").
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and
simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the ACCOUNTEMPS mark.
Additionally, Complainant’s
trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s
mark. Moreover, the domain name resolves to a website that provides
links to Complainant’s competitors. Thus, the Panel finds that
Respondent chose
the <wwwaccounttemps.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith
registration and use
pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or
registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make
any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous
mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the
domain names); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation,
that shall be evidence of registration and use of a domain
name in bad faith); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly
known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwaccounttemps.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
December 30, 2004
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