ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Robert Half International Inc. v. Andrew Gordillo Case No. DIO2023-0004 1. The Parties The Complainant is Robert Half International Inc., United States of America ("United States"), represented Foley & Lardner, United States. The Respondent is Andrew Gordillo, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2023. On January 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2023, 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 January 16, 2023, 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 January 19, 2023. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the "Policy"), the Rules for .IO Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .IO 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 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2023. The Respondent sent informal email communications on January 16, 17, and 19, 2023. The Center sent the Parties a possible settlement email on January 17, 2023. The Complainant did not submit a request to suspend the proceeding to pursue settlement discussions. The Center informed the Parties of its commencement of Panel appointment process on February 17, 2023. page 2 The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 28, 2023. 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 Background The Complainant is a corporation established under the laws of the State of Delaware and headquartered in Menlo Park, California, United States. Founded in 1948, the Complainant is one of the world's largest specialized employment staffing agencies, with more than 400 consulting and staffing offices and over 10,000 employees throughout the world. The Complainant earned annual revenues amounting to over USD 5 billion in the period 2019-2021. The record shows that the Complainant's ROBERT HALF brand is heavily advertised online, in print media, and at philanthropic events, and that the Complainant has received recognition and awards including being honored on Fortune magazine's "Most Admired Companies" list every year since 1998, Forbes "America's Best Professional Recruiting Firm" from 2018-2021, Forbes "America's Best Executive Recruiting Firms" from 2017-2021, Forbes selection as "America's Best Temporary Staffing Firm" in 2021, and The Wall Street Journal's recognition as one of the "World's Most Sustainably Managed Companies" in 2021. The Complainant has operated a principal website at "www.roberthalf.com" since 1995. The Complainant holds numerous trademark registrations consisting of, or incorporating, a ROBERT HALF mark or its initials, including the following: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE ROBERT HALF (standard characters) United States 1156612 June 2, 1981 RHI (letters and design) United States 2147434 March 31, 1998 ROBERT HALF TECHNOLOGY INFORMATION TECHNOLOGY PROFESSIONALS (words and design) United States 2689298 February 18, 2003 RH ROBERT HALF (words and design) United States 4482350 February 11, 2014 RH (letters and design) United States 4508151 April 1, 2014 ROBERT HALF MANAGEMENT RESOURCES (words and design) United States 4527041 May 6, 2014 ROBERT HALF TECHNOLOGY (words and design) United States 4527042 May 6, 2014 The Registrar reports that that the disputed domain name was registered on February 1, 2022, by the Respondent Andrew Gordillo, listing no organization and showing an incomplete postal address in the State of California, United States and a Gmail contact email address. page 3 The disputed domain name redirects to a third-party commercial website with pornographic content, "www.pornhub.com". 5. Parties' Contentions A. Complainant The Complainant asserts that the disputed domain name is identical to its ROBERT HALF "house mark" and that the Complainant has not granted the Respondent permission to use this mark. The Complainant contends that there is no indication that the Respondent has been known by a corresponding name, and that the use of the disputed domain name to redirect Internet users to a third-party pornography site is not a use in connection with "bona fide" offering of goods or services. Rather, the Complainant argues, this use reflects bad-faith exploitation of the Complainant's well-known mark for commercial gain. B. Respondent The Respondent did not reply substantively to the Complaint. Instead, in informal emails to the Center following receipt of the Complaint, the Respondent made the following statements: "Hello!! Are you all looking to purchase my domain? That is the only thing I will respond to! As I own full legal rights to this domain." (January 16, 2023) "Let me know if you all are willing to settle something to get this domain. Thank you." (January 17, 2023) (Separately, the Respondent sent an email on January 17, 2023 offering to sell the disputed domain name for USD 20,000.) "RobertHalf.io is my NFT project, which I will trademark and get this domain. thanks., ttyl." (January 19, 2023). Despite the notation "ttyl" (a common abbreviation for "talk to you later"), there were no further communications from the Respondent. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered or is being used in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Panels have recognized that the .IO Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (the "UDRP") and have applied principles established under the UDRP in disputes governed by the .IO Policy, noting differences where relevant. See, e.g., eBay Inc. v. Registration Private, Domains By Proxy, LLC / Thomas Ronk, Tendy LLC, WIPO Case No. DIO2022-0040. The .IO Policy, for example, differs from the UDRP in that the latter requires a demonstration of bad faith both at the time of registration and in subsequent use, whereas either will suffice for the complainant to prevail under the .IO Policy. See, e.g., International Business Machines Corporation v. Murat Satir, WIPO Case No. DIO2021-0001 ("International Business Machines"). Consequently, in the discussion below the Panel will refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and decisions under the UDRP as appropriate. page 4 A. Identical or Confusingly Similar As with UDRP complaints, the first element of a Policy complaint is essentially a standing requirement. WIPO Overview 3.0, section 1.7. In this case, it is easily satisfied: the disputed domain name is identical to the Complainant's registered ROBERT HALF word mark save for the space between names that cannot be shown in domain name system ("DNS") addresses for technical reasons. Further, UDRP panels have found that domain names identical to a complainant's trademark carry a high risk of implied affiliation. Id., section 2.5.1. As usual, the Top-Level Domain, here ".io", is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. The Panel concludes that the Complainant has established the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following: "(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Under the UDRP, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The same rationale should apply under the Policy, as the Respondent is in the best position to assert rights or legitimate interests in the disputed domain name. Here, the Complainant has made a prima facie case by establishing its trademark rights, denying that the Respondent has authorization to use the Complainant's marks, observing that the Respondent does not appear to be known by a corresponding name, and demonstrating that the Respondent has used the disputed domain name merely to redirect Internet users to a third-party, commercial pornography website. As other UDRP panels have concluded, this is not a legitimate interest within the meaning of the identical language of the UDRP, as such use is not "in connection with a bona fide offering of goods or services" but rather represents an effort to exploit and possibly tarnish the trademark of another. See, e.g., GIFI (SAS) v. Sarp Agel, WIPO Case No. D2022-5012; Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381; L'Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200; and Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered or Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following cited by the Complainant (in which "you" refers to the registrant of the domain name): "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or . page 5 (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." The Complainant's ROBERT HALF mark is distinctive (based on the founder's name, not a dictionary word or phrase) and long-established. It has been in use for more than 74 years and is well advertised, online and in the Respondent's country. The Respondent has communicated with the Complainant and the Center but has offered no substantive reply to the Complainant's arguments. The Respondent has not denied prior awareness of the Complainant's mark, and it is plausible that the Respondent registered the disputed domain name in the hope of extracting a purchase offer from the Complainant or a competitor in excess of the Respondent's out-of-pocket costs. Parking a domain name with a pornography site would add pressure for such a sale. In any event, redirecting the disputed domain name to a commercial pornography website operated by a third party meets the criteria of the Policy, paragraph 4(b)(iv), as the disputed domain name is essentially identical to the Complainant's mark and tends to misdirect Internet users to another online site for commercial gain.1 The Panel concludes that the Complainant has established the third element of the Complaint. 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. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: March 14, 2023 1 Notably, under the .IO Policy it is sufficient for the Complainant to demonstrate the Respondent's conduct in redirecting the domain name to a pornography site. It is not necessary to prove the Respondent's likely intent at the time the Respondent registered the disputed domain name, although the record here would support a finding of bad faith at that time as well.
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