WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benchmark Staffing, Inc. v. Peter Parker and Executive Solutions
Case No. D2002-0226
1. The Parties
1.1 The Complainant is Benchmark Staffing, Inc., a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 5700 Stoneridge Drive, Suite One, Pleasanton, California, United States of America.
1.2 The Respondents are Peter Parker, and individual, and Executive Solutions, both giving an address at 17206 Blanco Oaks, San Antonio, Texas, United States of America (hereinafter collectively referred to as the "Respondent").
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <benchmarkstaffing.biz>, which domain name is registered with NameSecure.com ("NameSecure").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on March 8, 2002. An Acknowledgment of Receipt was sent by the Center to the Complainant, dated March 15, 2002.
3.2 On March 18, 2002, a Notice of Complaint Deficiency was transmitted to the Complainant.
3.3 On March 18, 2002, a Request for Registrar Verification was transmitted to the registrar, to NSI on behalf of NameSecure, requesting it to: (1) confirm that the domain name at issue is registered with NameSecure; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") is in effect; (5) indicate the current status of the domain name.
3.4 On March 20, 2002, NSI confirmed by reply e-mail that the domain name is registered with NameSecure, is currently in active status, and that the Respondents are listed as registrant and registrant organization. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.5 On March 20, 2002, the Center received an amended complaint ("the Complaint").
3.6 The Center determined that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.7 No formal deficiencies having been recorded, on March 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 18, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.8 On April 22, 2002, not having received any response, the Center sent the parties a formal Notification of Respondent Default.
3.9 On May 8, 2002, in view of the Complainant's designation of a single Panelist, the Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant registered the service mark BENCHMARK STAFFING SERVICES in connection with personnel placement and recruitment services with the United States Patent Office ("USPTO") on April 22, 1997, and the service mark BENCHMARK in connection with employment placement and temporary staffing services with the USPTO on September 25, 2001. Complaint, Annexes 4 and 5.
4.2 Complainant has used the marks in connection with its short-term and long-term temporary staffing services and is a multimillion-dollar company based on its annual revenues.
4.3 Complainant registered the domain name <benchmarkstaffing.com> on November 5, 1997, and the name has been used since that time to resolve to Complainant's home page which provides information about the services which Complainant offers. Complaint, Annex 7.
4.4 On November 14, 2001, Respondent registered the domain name <benchmarkstaffing.biz>. Complaint, Annex 1.
4.5 To date, Respondent has not used the domain name to develop a web site.
4.6 Complainant has sent Respondent two letters requesting transfer of the domain name at issue. Respondent did not respond to the requests. Complaint, Annexes 8 and 9.
4.7 Complainant hired a private investigator to attempt to locate Peter Parker and/or Executive Solutions. There is no company named "Executive Solutions" which is licensed to do business in Texas at the address listed in the Whois report. No person named "Peter Parker" is listed as an owner or occupant of the housing unit located at the address given. While a company known as Executive Decisions is registered with the State of Texas having an address identical to that given in the Whois report, the phone number associated with that company corresponds to a private residence. The private investigator was unable to contact Mr. Parker using the information given to Whois. Complaint, Annex 11.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 The Panel finds that the domain name at issue is confusingly similar to the service marks in which the Complainant has rights. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 (the word "grill" and variations thereof added to trademark WEBER in various domain names).
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. This entitles the panel to assume the truth of the allegation. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.
6.7 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.9 Telstra established that whether "inaction" could constitute bad faith registration and use, could only be determined by analyzing the facts in a given case.
6.10 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent gave contact information to the registrar which was misleading or which did not enable an interested party to contact Respondent; (3) Respondent failed to respond to two letters from Complainant; and (4) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <benchmarkstaffing.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: May 30, 2002