Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
Respondent is Caleb Burke, Burke Construction, United States, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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 December 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 January 4, 2022.
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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. An email communication from Respondent was received on January 6, 2022 by the Center. On January 27, the Center notified the Parties of the commencement of panel appointment process.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on February 4, 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 BackgroundComplainant, PrideStaff, Inc., is a staffing firm based in the United States. Complainant is in the business of providing professional staffing services for both employers with professional staffing needs and individuals looking for job placement services. In particular, Complainant has offered dedicated staffing needs to pharmacists and pharmacies under the name and mark RX RELIEF. Complainant owns a United States trademark registration for RX RELIEF (Registration No. 1,483,780) in connection with its job placement service for pharmacists. That registration issued to registration on April 5, 1988, with a claim of first use in commerce of July 1981. Complainant also owns and uses the domain name
Respondent appears to have registered the disputed domain name on May 24, 2019. Respondent has used, and currently uses, the disputed domain name in connection with a website for a company called “Specialty Medical Staffing” providing healthcare related career and staffing services. The disputed domain name has also been listed on a Registrar’s page as available for purchase for $516 USD.
5. Parties’ Contentions A. ComplainantComplainant asserts that it has used the RX RELIEF mark since 1981 in connection with its staffing services for pharmacies and pharmacists and that the RX RELIEF mark, which is registered in the United States, has become well-known in the staffing industry on account of the many awards and recognition the RX RELIEF services have received over the years.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s RX RELIEF mark as it merely transposes the words “relief” and “rx” and adds the word “staff,” which does nothing to obviate the confusion.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not a franchisee or otherwise affiliated with Complainant, (ii) is in the construction business and unrelated to healthcare staffing services, and (iii) is using the disputed domain name to redirect web traffic to a staffing service unrelated to Complainant.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent registered the disputed domain name, which is based on the RX RELIEF mark, long after the RX RELIEF mark became well known and has used the disputed domain name to redirect web users to a website offering directly competing career and staffing services
B. RespondentRespondent did not submit a formal response, but on January 6, 2022, sent the Center an email challenging the proceeding and threatening legal action. In that email, Respondent contends that “I bought a domain name that has the word relief in it and you feel you were entitled to it. You should have bought it if you wanted it.”
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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 SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Section 1.2.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for the RX RELIEF mark and that such issued to registration years before Respondent registered the disputed domain name.
With Complainant’s rights the RX RELIEF mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet this standing requirement.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s RX RELIEF mark as it consists of mere transposition of Complainant’s RX RELIEF mark by separating the words “relief” and “rx” with the word “staff”. As Complainant’s mark is clearly identifiable in the disputed domain name, albeit in a transposed way, the inclusion of the word “staff” does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s RX RELIEF mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, thoughthe burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Respondent is currently using the disputed domain name with a website that offers staffing services that appear to directly compete with those offered by Complainant under its RX RELIEF mark. The website promotes a company using the name “Specialty Medical Staffing” and there is nothing on the website that arguably relates to Respondent’s claimed basis for registering a domain name based on the word “relief”. Reviewing the website at the disputed domain name, it appears fairly obvious that Respondent registered the disputed domain name that plays upon Complainant’s RX RELIEF mark, and which includes the word “staff” that directly relates to the very services offered by Complainant, as a way to drive web traffic to Respondent’s competing website for Respondent’s profit. Such use of the disputed domain name does not amount to a bone fide use or provide Respondent with a legitimate interest in the disputed domain name. See WIPO Overview 3.0 at section 2.5.3.
Given that Complainant has established with sufficient evidence that it owns rights in the RX RELIEF mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad FaithIn this matter, Respondent has registered and used the disputed domain name that plays upon Complainant’s RX RELIEF mark, and is likely to be viewed as connected to or authorized by Complainant, in connection with a website that offers competing healthcare related staffing services. Given Respondent’s actions and failure to provide a formal response, it appears from the evidence before the Panel that Respondent was aware of Complainant and its RX RELIEF services and registered and used the disputed domain name for purposes of attracting web users to a competing website for the Specialty Medical Staffing company.
It is worth noting that Respondent’s defense according to his January 6, 2022 email to the Center, seems to be that the disputed domain name is based on the word “relief,” was available for registration, and that Complainant’s failure to register the disputed domain name now precludes an objection. What Respondent misunderstands, though, is that the availability of a domain name that plays upon the mark of another is not a defense under the Policy. The mere fact that a domain name may be available for registration, or that Respondent secured it first, does not provide Respondent with greater rights in a disputed domain name that incorporates the trademark of another. Here, Respondent did not simply register the disputed domain name based on the word “relief,” but actually registered a transposition of Complainant’s RX RELIEF mark that included the word “staff,” which directly relates to Complainant’s actual services under the RX RELIEF mark, and then used the disputed domain name to redirect web users to a website providing competing staffing services in the very same industry.
Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s RX RELIEF mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element 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,
Georges Nahitchevansky
Sole Panelist
Date: February 18, 2022