The Complainant is Randstad Holding nv of Diemen, Netherlands, internally represented, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Ranstad S.r.l. of Chisinau, Moldova. 2. The Domain Name and Registrar
The disputed domain name is registered with MoldData, SC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2014, 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.
On November 10, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Romanian. On the same date, the Complainant requested English to be the language of the proceedings. The Respondent did not submit any comments.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2014. On same date, the Center informed the parties that, given the provided submissions and circumstances of this case and subject to the authority of the panel to determine otherwise, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Romanian; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 15, 2014. 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. Language of proceedings
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
As such, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. As stated by previous UDRP panels, the Panel’s discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matter such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either of the parties in their abilities to articulate the arguments for the case. See, Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
In the present case:
- The Registrar informed the Center that the language of the Registration Agreement is Romanian;
- The Complaint was submitted in English and following the Language of Proceedings Notification sent by the Center the Complainant filed a request that the language of the proceedings be English arguing, inter alia, that the Complainant is a Dutch company and the business language of the Complainant is English, the Complainant does not have a presence in a Romanian speaking country, nor anyone that understands Romanian, the additional expense involved in translation will be unfairly high and arranging the translations will delay the proceedings; also, all previous correspondence between the Complainant and the Respondent has been in English;
- The Respondent did not object to English being the language of the proceedings;
According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:
- The Complainant requested English to be the language of the administrative proceedings;
- The Center sent all the communications in both languages, Romanian and English;
The Center stated that the Respondent may submit its Response in Romanian or English (and would seek to appoint a Panel familiar with both languages).
- The email communications between the Complainant and the Respondent before this proceeding has been in English; and
- It should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Romanian, the Complainant is not able to communicate in Romanian language (see in this respect Fissler GmbH v. Chin Jang Ho,WIPO Case No. D2008-1002), while the Respondent seems to understand English since it responded in English to the Complainant’s prior correspondence. 4. Factual Background
The Complainant was founded in Netherlands in 1960 and is the world’s second largest recruitment and Human Resources (“HR”) services company. It has used the trademark RANDSTAD worldwide for many years and currently operates in 38 countries. The services provided by the Complainant have been promoted extensively under the RANDSTAD trademark, through marketing campaigns across the world.
The disputed domain name has been registered on June 4, 2014 and is used in connection with a website operating a competiting business. 5. Parties’ Contentions A. Complainant
The Complainant contends that it acquired rights in the trademark RANDSTAD through extensive, longstanding use and registration before the registration of the disputed domain name. The disputed domain name incorporates the word “ranstad” which is a common misspelling of the Complainant’s trademark (omitting a letter “d”) and is therefore likely to cause confusion as to the origin of the services offered via the disputed domain name.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name since the Complainant has no connection or affiliation of any kind with the Complainant, nor has the Complainant ever granted the Respondent licence or consent, express or implied, to use the RANDSTAD trademark in any manner. The Complainant further shows that the Respondent is using the disputed domain name in connection with what appears to be a competing business, offering recruitment and HR services including job placements in Poland. The Complainant argues that this serves to confirm that the Respondent is using the disputed domain name to mislead the public into believing that the Respondent is related to the Complainant, and to benefit from the reputation that the Complainant has acquired.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. As to the registration in bad faith, the Complainant argues that the disputed domain name is a common misspelling of its trademark RANDSTAD and given the well-known and distinctive nature of the RANDSTAD trademark it is evident that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the RANDSTAD trademark. As regards the use in bad faith, the Complainant shows that the website connected to the disputed domain name seems to be offering services which are identical to those provided by the Complainant and the Respondent appears to be operating a competing business via the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.)
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark RANDSTAD (at international and European level by submitting evidence of various trademark registration including community trademark no. 3488311 registered on October 29, 2003, the international trademark no. 643208 registered on August 31, 1995, or the US trademark no. 2365880 registered on July 11, 2000). These trademark registrations also predate the registration of the disputed domain name (June 4, 2014).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.
The disputed domain name differs from the mark RANDSTAD merely by the removal of the letter “d” after “ran” in the trademark. This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark (see Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; Randstad Holding nv v. Pinaki Kar,WIPO Case No. D2013-1796). Also, according to the consensus view of UDRP panels, “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10).
In addition, it is well accepted by UDRP panels that a country code Top-Level Domain (“ccTLD”) such as “.md”, is generally to be ignored when assessing identity or confusing similarity of a trademark and a domain name (see, e.g., Bella Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with a complainant in as far as making out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (See WIPO Overview 2.0, paragraph 2.1).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
This Panel noticed that the disputed domain name seems to be identical to the apparent trade name of the Respondent; hence the Respondent might have claimed it had been known by the disputed domain name. However, the Complainant provided evidence that the disputed domain name is used in connection to a website offering misleadingly competing recruitment services, dispatching the Complainant’s logo with the same colour and font as the one used on the Complainant’s official website.
Moreover, the Respondent did not respond to the Complainant’s contentions to provide any evidence of rights or legitimate interest in respect of the disputed domain name. Also, it seems that in correspondence carried between the parties before the commencement of this proceedings, the Respondent confirmed that “next week will be big changes on website” as response to several requests from the Complainant to remove its logo from the website.
Under such circumstances, this Panel agrees with the opinion expressed by other UDRP panels in a similar case where it was stated that “therefore, the actual use of the disputed domain name was in all likelihood in conflict with the Complainant's RANDSTAD Marks, not bona fide under the Policy, and, to the Panel’s view, is therefore not qualified to establish own rights or legitimate interests under the Policy.” (See Randstad Holding nv v. Mohamed Sbih, mobilpad,WIPO Case No. D2014-1230).
In light of the above, the Panel finds that the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.”
As regards the registration in bad faith, this Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant’s RANDSTAD trademarks given that the said trademarks have been used worldwide for many decades and the parties to this dispute are doing business in the same field of activity of providingHR recruitment services. Moreover, the Respondent has not denied knowledge of the Complainant; instead, it suggested that changes would be made to the website to presumably accommodate the Complainant’s requests prior to these proceedings that its logo be removed from the website to which the disputed domain name resolves. Under such circumstances, this Panel is of the view that bad faith registration can be established (see for a similar finding Randstad Holding nv v. Mohamed Sbih, mobilpad,WIPO Case No. D2014-1230).
In what concerns the bad faith use, the Respondent is using a domain name that is confusingly similar to Complainant’s RANDSTAD trademarks in connection to a website offering services similar with those offered by the Complainant. The website seems to feature the Complainant’s logo having the same colour and font as the one used by the Complainant on its official website. Under such circumstances, this Panel is satisfied that the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy (for a similar finding see Randstad Holding nv v. Pinaki Kar,WIPO Case No. D2013-1796; Randstad Holding nv v. Mohamed Sbih, mobilpad,WIPO Case No. D2014-1230).
The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith. 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 be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Date: December 29, 2014
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