The Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
The Respondent is TAL Group Inc., Canada.
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 28, 2021, the Registrar transmitted by email to the Center its verification response 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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent did not submit any formal response but sent an email communication to the Center on January 6, 2022. On January 27, 2022, the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 28, 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 company founded in 1978 and operates in the field of providing staffing services through the United States. Since at least as nearly as 1981, the Complainant has offered staffing services for pharmacies and pharmacists under the RX RELIEF mark.
The Complainant holds trademark registrations for RX RELIEF mark, such as the United States Trademark Registration No. 1483780, filed on August 10, 1987 and registered on April 5, 1988, covering services in class 35.
The Complainant owns and uses the domain name
The disputed domain name
The Respondent is a recruitment agency located in Canada.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it has used the RX RELIEF trademark as a service mark continuously and exclusively in connection with job placement services since 1981, the disputed domain name is confusingly similar to its RX RELIEF trademark, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions.
On January 6, 2022 the Center received an email communication from the Respondent stating that “…this is not our domain. We have never used this domain for any business reasons”.
6. Discussion and FindingsIn view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the RX RELIEF trademark.
The disputed domain name incorporates the trademark RX RELIEF with one additional term, “jobs”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark RX RELIEF, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark RX RELIEF, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
Although properly notified with regard to the present procedure, the Respondent failed to provide a substantive Response to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.
The mere allegations that the disputed domain name does not belong to it or that it has not used the disputed domain name for business purposes, are inadequate since the information in the WhoIs (including telephone number and email address), confirmed by the Registrar, indicates the Respondent as the registrant of record for the disputed domain name, the registrant being ultimately the person in control of the disputed domain name.
According to the records before it, the Respondent has used the disputed domain name in connection with a parking page displaying PPC links, promoting services of the Complainant’s competitors. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant holds trademark rights for RX RELIEF since at least 1987 and promotes its business under the domain name
The disputed domain name was registered in 2005 and incorporates the Complainant’s mark together with the word “jobs”, a word closely related to the Complainant’s services. Also, the Respondent is providing similar services to those offered by the Complainant, in a neighbouring country.
From the above, the Panel finds that the Respondent was aware of the Complainant, its business and trademark at the registration of the disputed domain name.
At the time of filing the Complaint, the disputed domain name resolved to a parking page providing links to employment and staffing services which are similar to those offered by the Complainant.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.
Such registration and use of the disputed domain name can also be viewed as a registration made primarily for the purpose of disrupting the business of a competitor, as listed under the paragraph 4(b)(iii) of the Policy. Previous UDRP panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise. See section 3.1.3 of theWIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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
Marilena Comanescu
Sole Panelist
Date: February 8, 2022