Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
Respondent is Perfect Privacy, LLC, United States / Marcheta Bowlin, Midwest Merchant Services, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 28, 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 Complainant on September 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2021.
On November 2, 2021, the Center received an email regarding this proceeding from a third party Gmail address incorporating Respondent’s surname and a different given name. The Center and third party exchanged further email correspondence on November 3, 2021. On November 8, 2021, the Center informed the Parties that the third party’s email communications would be forwarded to the Panel upon appointment.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 8, 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 BackgroundFounded in 1978, Complainant is a staffing agency providing professional staffing services throughout the United States. Since at least as early as 1981, Complainant has offered staffing services for pharmacies and pharmacists under the RX RELIEF mark. Complainant owns a trademark registration for RX RELIEF, namely, United States Registration No. 1,483,780, registered on April 5, 1988. In addition, Complainant owns and operates a website at the domain name
Respondent registered the Disputed Domain Name on August 21, 2017. The Disputed Domain Name leads to a pay-per-click (“PPC”) website featuring links to websites offering employment and staffing services.
5. Parties’ Contentions A. ComplainantComplainant asserts that it has established rights in the RX RELIEF mark and that the Disputed Domain Name is confusingly similar to the RX RELIEF mark. Specifically, Complainant contends that the Disputed Domain Name incorporates the RX RELIEF mark in its entirety, and that the addition of a hyphen between “RX” and “RELIEF” does not obviate the confusing similarity.
Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that Complainant has not licensed or authorized Respondent’s use of Complainant’s RX RELIEF mark. Complainant contends that Respondent is not doing business as “Rx-Relief” and is not using the Disputed Domain Name in connection with a bona fide offering of services. Complainant specifies that Respondent is using the Disputed Domain Name for a website serving as a PPC revenue generator featuring third-party advertisements promoting services such as employment and staffing services directly competitive services to Complainant.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. According to Complainant, Complainant’s RX RELIEF mark is well known, and Respondent registered the Disputed Domain Name to capitalize on the goodwill associated with Complainant’s RX RELIEF mark. Complainant alleges Respondent’s use of the Disputed Domain Name for PPC advertising and associated revenue generation is use in bad faith. Complainant also alleges that Respondent set up Mail Exchange records (“MX records”) to enable sending and receiving emails from the Disputed Domain Name, which suggest use for fraudulent employment scams. According to Complainant, because Respondent’s use of the Disputed Domain Name implies affiliation with Complainant, merely showing Respondent has the ability to send emails from the Disputed Domain Name is sufficient to establish bad faith, and Complainant is not required to show Respondent has sent fraudulent emails in connection with the Disputed Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions.
On November 2, 2021 and November 3, 2021, a third party sent emails to the Center from a Gmail address incorporating Respondent’s surname and a different given name. In these emails, the third party alleged “Midwest merchants closed over a decade ago” and asked the Center to provide Complainant’s identity. In response, the Center asked the third party to identify her or his relationship to Respondent. The third party did not respond to indicate any relationship to Respondent or deny any of Complainant’s allegations.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel finds that Complainant has demonstrated its rights in the RX RELIEF mark by way of its federal trademark registration. The Disputed Domain Name is confusingly similar to the RX RELIEF mark because it incorporates the mark in its entirety. The added hyphen and the generic Top-Level Domain “.com” in the Disputed Domain Name do not prevent a finding of confusing similarity.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, which Respondent has not rebutted. There is no evidence of record showing that Respondent is commonly known by the Disputed Domain Name or that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent registered the Disputed Domain Name in bad faith. The Disputed Domain Name consists of Complainant’s RX RELIEF mark and a hyphen between “RX” and “RELIEF”. Given the similarity between Complainant’s RX RELIEF mark and the Disputed Domain Name, and the fact that Complainant’s use and registration of its RX RELIEF mark long predate Respondent’s registration of the Disputed Domain Name, it is more likely than not that Respondent registered the Disputed Domain Name with the intent to create a likelihood of confusion with Complainant’s RX RELIEF mark.
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. Respondent’s use of the Disputed Domain Name in connection with a PPC website containing links for services competitive with Complainant’s services demonstrates bad faith use. See Citigroup Inc. v. Andrew Robert Wilson, Andrew Robert WilsonWIPO Case No. D2021-1058. Complainant has provided record evidence in the form of a MX record printout that suffices to establish that the Disputed Domain Name has active MX records allowing Respondent to use the Disputed Domain Name for email. Respondent has not rebutted Complainant’s claim that Respondent assigned the MX records to the Disputed Domain Name for potential use in employment scams. Also Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Lawrence K. Nodine
Sole Panelist
Date: November 22, 2021