The Complainant is Randstad Holding N.V. of Diemen, The Netherlands, represented by Chiever B.V., The Netherlands.
The Respondent is Paul Akomeah of Pretoria, South Africa and of Rocky Hill, New Jersey, United States of America (“United States”). 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC and the disputed domain name is registered with eNom, Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2016. On July 12, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 12 and 13, 2016 the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2016.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 22, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The facts relevant to the decision in this case are that:
(1) the Complainant provides recruitment and human resource services by reference to the trade mark RANDSTAD;
(2) the trade mark is the subject of United States Patent and Trademark Office (“USPTO”) Registration No. 2,365,880 filed on November 18, 1998 and registered on July 11, 2000 in the name of the Complainant;
(3) the disputed domain name was registered on May 26, 2016 and the disputed domain name was registered on May 30, 2016;
(4) neither disputed domain name resolves to a website but the domain name has been used by the Respondent to send an email which, on its face, appears to originate from within the Complainant group of companies; and
(5) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in RANDSTAD and alleges that the disputed domain names are confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of registration of the trade mark RANDSTAD with the USPTO and so the Panel accepts that the Complainant has trade mark rights.
For the purposes of testing confusing similarity, the generic Top-Level Domain “.com” can be disregarded. The disputed domain names take the trade mark and hyphenate it to the letters “uk”, which to the great majority of Internet users would be understood as an abbreviation of the “United Kingdom”. Those additional letters are not of source distinguishing value and the trade mark remains the distinctive part of the disputed domain names.2 The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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; or
(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.”
There is no evidence that the Respondent has trade mark rights in the disputed domain names. The publicly available WhoIs database identifying the Respondent as the registrant does not support any conclusion that the Respondent might be commonly known by either of the disputed domain names. There is no relationship between the parties, and the Complainant has not authorized the Respondent to use its trade mark.
The Complainant states that the Respondent misleadingly diverts Internet users away from the Complainant’s true website but that claim is essentially unrelated to the facts as presented which are (i) that the domain name has not been used, and (ii) the domain name has been used by the Respondent to pose as an employee of one of the Complainant’s UK Offices and send an email to one of the Complainant’s Indian offices fraudulently attempting to obtain travel agency details (and, presumably, authority to use that agency to book travel/accommodation services on account of the Complainant).
As such, there is no evidence that the Respondent has used either disputed domain name or a name corresponding to those names in connection with a bona fide offering of goods or services, or that there has been legitimate noncommercial use of either disputed domain name. In one case there is no use at all; in the other there is evidence of a phishing scheme and bad faith use.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that [the respondent has] registered or [has] 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 your 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 or service on your web site or location.”
In both cases the Panel finds proof of registration in bad faith and proof of use in bad faith. The Complainant has used the trademark since 1960 and, at the time of registration of the disputed domain names, had almost 4,500 offices operating across 40 countries and an annual turnover of EUR 17 million. Knowledge of the trademark could reasonably be inferred from the resultant reputation of the trade mark. However, given registration of the domain names on the same date and the bad faith use of one of the disputed domain names to target the Complainant, the Panel finds actual knowledge of the trademark and registration in bad faith.4
The bad faith use of the disputed domain name has been outlined already and, given the proven reputation in the trademark, the Panel finds bad faith “use” of the disputed domain name in accordance with the principles first laid out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: September 5, 2016
1 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 See LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov,WIPO Case No. D2010-1965, holding to be confusingly similar to LEGO because the letters “bg” would be understood as the ISO for Bulgaria; see also eBay Inc. v. David Sach,WIPO Case No. D2009-1083 finding the addition of an ISO country code to “eBay” in the domain name is not enough to avoid confusing similarity with the trade mark EBAY.
3 See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
4 See, for example, Desko GmbH v. Mustafa Mashari, WIPO Case No. D2015-0817, for a case with similar facts.
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