The Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
The Respondent is S Singh, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 21, 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 December 26, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 3, 2022. 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 BackgroundThe Complainant is a corporation located in California, United States. It is a provider of professional staffing services.
The Complainant is the owner of Unites States Registration No. 2116589 for the word mark PRIDESTAFF, registered on November 25, 1997 for services including employment agency and related services in International Class 35.
The disputed domain name was registered on January 8, 2019.
The disputed domain name has resolved to a website at “www.pridestaffingsolutions.com”. The website appears to be that of an employment recruitment business based in India and trading under the name Pride Staffing LLP.
5. Parties’ Contentions A. ComplainantThe Complainant states that it was founded in 1978 and is one of the best-known staffing firms in the United States. It submits that it has used the PRIDESTAFF trademark since 1995 and the domain name
The Complainant submits that the disputed domain name is confusingly similar to its PRIDESTAFF trademark. It contends that neither the alteration of the word “staff” to “staffing” nor the addition of the word “solutions” does anything to obviate the confusing similarity between the disputed domain name and its trademark.
The Complainant states that it discovered the existence of the disputed domain name in June 2019, at which time the Respondent advertised a United States office on its website with an address and telephone number based in Texas, United States. The Complainant exhibits extracts from correspondence between itself and the Respondent 1 dating from July 26, 2019 in which it appears to have objected to the Respondent’s use of the name Pride Staffing LLP for recruitment services within the United States. The Respondent replied on August 7, 2019 to the effect that Pride Staffing LLP was registered in India and that its office and operations were in India only, although “we have client [sic] in the United States”. The Complainant renewed its objections in July and December 2021 but does not appear to have received any reply to those communications. It did however receive a delivery failure notification in respect of the contact email provided on the Respondent’s website.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends in particular that, while the Respondent has appeared to be operating a legitimate staffing firm, there is in fact no indication that the business is a going concern. Instead, the Complainant submits that the Respondent registered the disputed domain name to capitalize on the goodwill associated with its PRIDESTAFF trademark by misrepresenting to Internet users that the disputed domain name must be connected with the Complainant.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. It states that the disputed domain name is so obviously connected with its PRIDESTAFF mark that the Respondent can only have registered it in order to take unfair advantage of the goodwill attaching to that trademark. It refers to the Respondent’s avowal that it has offices in India only, while continuing nevertheless to promote its business in the United States. The Complainant makes further submissions of bad faith based on the Respondent having configured mail servers connected to the disputed domain name and its use of a privacy shield upon registration of the disputed domain name.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it has registered trademark rights in the mark PRIDESTAFF. The disputed domain name incorporates the whole of that trademark, although the term “ing” has been added to “staff” in addition to the word “solutions”. Neither of these differences prevents the Complainant’s trademark from being recognizable within the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsIn the view of the Panel, whether or not the Respondent has rights or legitimate interests in respect of the disputed domain name depends on whether or not its Pride Staffing LLP operation in India is a genuine business concern. If this is a bona fide business, then the Complainant’s objections to its doing business in the United States under that name would not be sufficient to establish a lack of rights or legitimate interests for the purposes of the Policy: the UDRP is not designed to resolve all types of trademark disputes per se, but is intended for cases of cybersquatting. If, on the other hand, the Respondent’s business is not genuine, and is merely a “front” intended to disguise its targeting of the Complainant’s trademark, then the Respondent will be found to have no rights or legitimate interests in that regard.
Having considered the evidence available to it, the Panel is of the view, on balance, that the Respondent’s business is not genuine and forms part of a scheme to take unfair advantage of the Complainant’s PRIDESTAFF trademark. The Panel takes this view principally for the following reasons:
1. Although it is comprised of two dictionary terms, the name PRIDESTAFF is distinctive in nature. There is no obvious reason to juxtapose those two terms and the Panel considers it unlikely that the Respondent would have arrived at the name “Pride Staffing” wholly coincidentally, particularly if it was doing business partly in the United States.
2. The Panel finds the Respondent’s website to be unconvincing in nature. The content is highly generic and does not give the impression of a genuine going concern. The Panel also considers it significant that the Complainant received a “bounce-back” from the contact email address provided on the website.
3. The Respondent has chosen not to file a Response in this administrative proceeding. While it is for the Complainant to prove its case, the Panel finds that the Complainant has raised at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However (and while noting that it did respond to the Complainant by email in August 2019) the Respondent has given no explanation in this proceeding for its choice of the disputed domain name and has not formally disputed any of the allegations contained in the Complaint.
The Panel finds in the circumstances, including the absence of any response or objection by the Respondent, that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithSimilar considerations apply to the issue of bad faith as in the case of rights or legitimate interests as discussed above. Having found on balance that the Respondent’s choice of the disputed domain name is unlikely to have been coincidental, and that its website does not appear to represent a genuine going concern, the Panel concludes that the Respondent is likely to have registered and used the disputed domain name in the knowledge of the Complainant’s PRIDESTAFF trademark and with the intention of taking unfair advantage of the Complainant’s goodwill attaching to that trademark. The Panel finds that the disputed domain name is inherently misleading and is likely to confuse Internet users, particularly within the United States, into assuming there to be a commercial affiliation between the Respondent’s website and the Complainant. The Panel therefore finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel finds in the circumstances, including the absence of any response or objection by the Respondent, that the 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,
Steven A. Maier
Sole Panelist
Date: February 17, 2022
1 While the Complainant does not appear to have corresponded with anyone named S Singh, the email communications on which it relies were sent to, and received from, the registrant email address held by the Registrar in connection with the disputed domain name.