WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Half International Inc. v. Larry Brown
Case No. D2006-0745
1. The Parties
Complainant is Robert Half International Inc., a corporation with offices in Menlo Park, California, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
Respondent is Larry Brown with an address in Bishop, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thevirtualofficeteam.com> is registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 14, 2006. On June 15, 2006, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On June 15, 2006, NamesDirect.com transmitted by email to the Center its verification, confirming that Respondent is listed as the registrant of the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with paragraph 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced June 20, 2006. In accordance with Rule 5(a), the Response was due July 10, 2006.
No response was received from Respondent by the July 10, 2006 deadline. On July 24,2006, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default.1
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 3, 2006. 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 paragraph 7 of the Rules.
4. Factual Background
Complainant has for many years offered specialized administrative staffing services under the mark OFFICETEAM. Complainant’s wholly owned subsidiary owns a United States federal trademark registration for the mark OFFICETEAM for such services. The mark, registered in 1992, claims a date of first use of 1991. In addition, Complainant uses its website, “www.officeteam.com” to promote, advertise, and administer its services.
Sometime before April 2003, Respondent’s wife, Nancy Brown, registered the <thevirtualofficeteam.com> domain name and began using it to offer and provide staffing services similar to those offered by Complainant. Complainant obtained a default judgment from the United States District Court for the Southern District of New York against Nancy Brown, which included an order directing her to transfer the domain name to Complainant. The domain name was not transferred to Complainant. In March 2006, within days of Complainant’s letter to Namesdirect.com requesting transfer of the domain name to Complainant, Nancy Brown transferred the domain name to Respondent, Larry Brown, who is her husband. Since at least that time, the website associated with the domain name has not been active.
5. Parties’ Contentions
Complainant makes the following contentions:
The disputed domain name is confusingly similar to the OFFICETEAM trademark because it incorporates the mark in its entirety.
Respondent has no rights or legitimate interests in the domain name or in the trademark OFFICETEAM. The website is inactive. Complainant has not authorized Respondent to register or use the domain name. Complainant’s use of the OFFICETEAM mark, including Complainant’s registration of the <officeteam.com> domain name, predates Respondent’s registration and use of <thevirtualofficeteam.com>.
Respondent registered and is using the domain name in bad faith. Respondent acquired the domain name from his wife in an attempt to circumvent the terms of the default judgment obtained against her.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove:
(i) The <thevirtualofficeteam.com> domain name is identical or confusingly similar to Complainant’s mark;
(ii) Respondent has no rights or legitimate interests in respect of the <thevirtualofficeteam.com> domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. The Complainant has established rights in the mark OFFICETEAM by virtue of the federal trademark registration owned by its wholly owned subsidiary. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.8 (parent of registered owner considered to have rights in mark).
Complainant must also establish that the disputed domain name is identical or confusingly similar to its mark. Complainant does not argue that the <thevirtualofficeteam.com> is identical to OFFICETEAM, which it is not.
Complainant must, therefore, establish that the domain name is “confusingly similar” to the mark. Complainant’s sole argument is that the domain name “incorporates [the] OFFICETEAM mark in its entirety.” While, as a general matter, a domain name that incorporates a mark in its entirety is likely to be deemed confusingly similar to the mark, additional words, letters, or numbers added to the domain name may distinguish the name from the mark and obviate any confusing similarity.
By virtue of its default, however, Respondent has not advanced any arguments on this element. Therefore, the Panel concludes that the domain name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant must make a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in Paragraph 4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has the burden of showing rights or legitimate interests in the domain name).
Complainant has clearly established long-time and extensive use of the OFFICETEAM mark, making it difficult to conceive of circumstances in which Respondent might have legitimately used or become known by the domain name.
First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. Respondent only recently acquired the domain name and the associated website is not active.
Second, it does not appear that the disputed domain name is Respondent’s legal name or is used to identify Respondent.
Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain name.
Respondent has not met its burden of demonstrating any rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (if, after complainant’s prima facie showing, respondent fails to show rights or legitimate interests in the domain, complainant deemed to satisfy paragraph 4(a)(ii) of the UDRP). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, Respondent’s domain name is confusingly similar to the OFFICETEAM mark. It is therefore reasonable to conclude that Respondent’s site attracts visitors who are actually seeking Complainant’s site. Complainant’s mark has been in use for many years and is well known in connection with its staffing services; it would not be unreasonable to impute to Respondent knowledge of Complainant’s rights in registering and using the domain name.
Although Respondent’s website is not currently active, other circumstances indicate Respondent’s bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.2 (non-use of the domain name does not preclude a finding of bad faith; panel should look at all the circumstances in determining whether respondent is acting in bad faith). First, his relationship to the prior registrant of the domain name, from which the Panel infers that he knew of Complainant’s trademark rights and knew of the terms of the default judgment. Second, the timing of the transfer, from which the Panel infers that he participated in the transfer of the domain name to avoid its transfer to Complainant.
Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Rule 15, the Panel orders that the domain name <thevirtualofficeteam.com> be transferred to Complainant.
Debra J. Stanek
Date: August 16, 2006
1 That e-mail notification was not successful. However, the earlier formal notification of the Complaint was successful, as evidenced by the records of the courier service used.