The Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
The Respondent is marilyn foster, pride staffing llc, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2021. The Center verified that the Complaint together with the amended 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 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on August 4, 2021. 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 Founded in 1978, the Complainant is a well-known staffing firm in the United States. The Complainant has over 85 offices nationwide and is in the business of providing professional staffing services for both employers with professional staffing needs and individuals looking for job placement services. The Complainant owns the following trademark: PRIDESTAFF, United States Trademark Registration No. 2,116,589, registered on November 25, 1997 for use in connection with employment agency services in international class 35, with a first use date of March 1, 1995 (hereinafter referred to as the “PRIDESTAFF Mark”). In addition, the Complainant has owned the The Disputed Domain Name was registered on December 5, 2020 and resolves to a landing page that contains pay-per-click, third-party sponsored hyperlinks. Upon clicking the links, the user is taken to an additional page that contains links to employment recruiting services and other employment-related services. Upon clicking the employment-related links, a consumer is taken to an additional page with advertising links for service providers in employment recruiting services, including direct competitors of the Complainant. In addition, the Respondent configured the Disputed Domain Name for email functions and allegedly used the email address “[ ]@pridestaffingservice.com” to impersonate the Complainant and send fraudulent emails in an attempt to deceive Internet users into believing that the Complainant had available positions for job seekers. On April 21, 2021, counsel for the Complainant sent an email to the Respondent demanding that the registrant of the Disputed Domain Name cease all use of the PRIDESTAFF Mark in connection with staffing services, transfer the Disputed Domain Name to the Complainant, and disable all social media accounts that included the combination of the terms “pride” and “staff” or “staffing”. The Respondent replied, stating that its business was no longer in operation, that the Disputed Domain Name was no longer in use, that it did not have the log-in information for the Disputed Domain Name and thus could not control its transfer, and that its Instagram account was terminated. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the PRIDESTAFF Mark. It is uncontroverted that the Complainant has established rights in the PRIDESTAFF Mark based on its years of use as well as the registered, incontestable trademark for the PRIDESTAFF Mark in the United States. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the PRIDESTAFF Mark. The Disputed Domain Name It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy despite the addition of a dictionary term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary term or terms does not prevent a finding of confusing similarity. See PrideStaff, Inc. v. Registration Private, Domains By Proxy, LLC / Code optimal Solutions, Code optimal solutions,WIPO Case No. D2020-0154 (ruling that because a domain name is identical or confusingly similar to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name, the confusion is not dispelled); Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011‑0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008‑0923. Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s PRIDESTAFF Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s PRIDESTAFF Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name to resolve to pay‑per‑click pages, the Panel finds that the Respondent is not making a bona fide offering of goods or services. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. Further, by configuring emails using the Disputed Domain Name, the Respondent attempted to pass off as the Complainant purportedly to perpetuate a phishing scheme, which does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). Therefore, the Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy. First, the Disputed Domain Name was registered years after the Complainant first began using its PRIDESTAFF Mark. Therefore, the Panel finds it likely that the Respondent had the Complainant’s PRIDESTAFF Mark in mind when registering the Disputed Domain Name. Second, the Respondent is using the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at unknowing Internet users, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails to employers and customers, or to solicit prospective employees for new positions, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Disputed Domain Name and the Complainant’s PRIDESTAFF Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Previous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”). Third, based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s PRIDESTAFF Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its PRIDESTAFF Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain.”). Finally, the Respondent attracts Internet users for commercial gain by displaying third-party pay-per-click sponsored links. Use of a confusingly similar domain name to display third-party hyperlinks and potentially collect click-through fees is evidence of bad faith under Policy paragraph 4(b)(iv). See Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC,WIPO Case No. D2006-1128. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Name Lynda M. Braun
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: August 18, 2021
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