The Complainant is Dependable Staffing Services, LLC of Phoenix, Arizona, United States of America, represented internally.
The Respondent is Ramesh Prasad of Elk Grove, California, United States of America.
The disputed domain names, <dependablestaffingagency.com> and <dependablestaffingagency.net> are registered with TierraNet d/b/a DomainDiscover.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain names. On September 14, 2009 TierraNet d/b/a DomainDiscover 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 20, 2009.
On diverse dates between October 20, 2009 and October 26, 2009, the Center received various informal communications from both the Complainant and Respondent. As such communications did not conform with the submission requirements of the Rules, the Panel has not considered them in rendering its ruling below.
The Center appointed Dennis A. Foster as the sole panelist in this matter on October 29, 2009. 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.
The Complainant is a United States of America company, operating in the state of Arizona and engaged in the business of providing temporary office staffing to other companies. It has obtained a valid service mark registration with the United States Patent and Trademark Office (“USPTO”) for the mark, DEPENDABLE STAFFING (Registration No. 3141276; issued September 12, 2006).
The Respondent, a resident of the state of California in the United States, has registered the disputed domain names, <dependablestaffingagency.com> and <dependablestaffingagency.net>, and the record of registration was created on January 5, 2006.
- The Complainant has been in the business of supplying temporary office staffing since 1996.
- The Complainant owns a valid USPTO trademark registration for the mark DEPENDABLE STAFFING. Both disputed domain names are confusingly similar to that mark. The names contain the Complainant's full trademark, adding only the word “agency,” which increases the confusion because that word describes exactly what the Complainant is.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent appears to be involved in the mortgage industry and has not thus far used either of the names. When the Complainant requested that the Respondent transfer the disputed domain names, he refused.
- The Complainant has registered dozens of domain names that are similar to its service mark to protect that mark from non-affiliated individuals.
- The Respondent has refused to acknowledge or abide by the Complainant's trademark rights, thus it appears that the Respondent is acting in bad faith with respect to registration and use of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
Pursuant to Policy paragraphs 4(a)(i), (ii) and (iii), the Complainant shall prevail in these proceedings and obtain a transfer of the disputed domain names, <dependablestaffingagency.com> and <dependablestaffingagency.net>, if the Complainant can prove that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names are registered and being used by the Respondent in bad faith.
The Complainant's provision to the Panel of evidence that it owns a valid USPTO registration for the service mark, DEPENDABLE STAFFING, confirms that the Complainant possesses rights in that mark for the purposes of Policy paragraph 4(a)(i). See, Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., NAF Claim No. FA888071 (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.”); and Intel Corporation v. M. Macare a/k/a M. Macar, NAF Claim No. FA660685 (“Complainant has established rights in the following marks by registering them with the United States Patent and Trademark Office...”).
Both disputed domain names, <dependablestaffingagency.com> and <dependablestaffingagency.net>, contain the Complainant's full mark together with the descriptive English language word “agency” and a gTLD. In the view of the Panel, the additional word does not serve to distinguish the names from the mark in any material manner because the Complainant acts as an “agency” in the supply of its temporary employees for its business clients. Thus, following the near unanimous precedent set in prior UDRP rulings when examining like circumstances, the Panel concludes that the disputed domain names are at least confusingly similar to the Complainant's service mark. See, Accenture Global Servs. GmbH v. Alok Mishra, WIPO Case No. D2007-0559 (“The domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant's principal business offering ….”); and American Express Company v. MustNeed.com, NAF Claim No. FA257901 (finding the domain name, <amextravel.com>, to be confusingly similar to the trademark, AMEX, and stating that “[t]he mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent's domain name pursuant to Policy [paragraph] 4(a)(i).”).
In line with the analysis above, the Panel finds that the Complainant has sustained its burden to prove that the disputed domain names are identical or confusingly similar to a service mark in which the Complainant has rights.
The Complainant's contentions and presentation of evidence in this case convince the Panel that the Complainant has a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Thus, the burden has shifted to the Respondent to come forward with evidence to support such rights and interests. See, Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828 (“Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy [paragraph] 4(a)(ii).”); and Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical and Medical Services Agency), WIPO Case No. D2000-1228.
In this case, the Respondent has failed to submit any evidence to the Panel. The Panel has discovered no other evidence in the record to support the notion that the Respondent can credibly claim rights or legitimate interests in the disputed domain names based on his having made “demonstrable preparations to use the disputed domain names or a name corresponding to the those names in connection with a bona fide offering of goods or services” or having made “a legitimate noncommercial or fair use of the disputed domain names.” Moreover, the Panel notes that the Respondent's name, Ramesh Prasad, bears absolutely no resemblance to either of the disputed domain names. Ergo, the Panel concludes that none of the criteria set forth in paragraph 4(c) of the Policy can be cited, independent of the Respondent's failure to respond in these proceedings, to support his potential claim to rights or legitimate interests in the disputed domain names. In view of the insufficient rebuttal in the record, the Panel believes that Complainant's prima facie case must prevail as to this element of the Policy.
Accordingly, the Panel finds that the Complainant has sustained its burden to prove that the Respondent has no rights of legitimate interests in the disputed domain names.
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Respondent both registered and is using the disputed domain names in bad faith. The rather terse Complaint provides the Panel with little evidence with respect to the former requisite. Instead, the Complainant itself avers somewhat inconclusively that it is “unaware as of this time if the registration was done in bad faith” and that the Respondent's registration only “appears to be in bad faith” [emphasis added].
More specifically, beyond reciting that it has been in business since 1996, the Complainant has provided no compelling evidence to the Panel regarding the scope of recognition pertaining to its service mark. That mark, DEPENDABLE STAFFING, is composed of two generic words, and Complainant has failed to present the Panel with any evidence (e.g., volume of sales, number and range of customers, extent of adverting or degree of media notice) that those words have acquired a “secondary meaning” that relates them exclusively to the Complainant in even a limited geographical region, let alone more broadly.
In this case, the Complainant is a company located in the state of Arizona. In the Panel's experience, most temporary staffing agencies are local in operation. The Respondent is a resident of the state of California, and thus likely outside of the Complainant's orbit.
For the foregoing reasons, it is not reasonable for the Panel to conclude that the Respondent was actually or necessarily aware of the Complainant or its business operations when he registered the disputed domain name. This is crucial because the constructive notice implicit in the Complainant's USPTO service mark registration is absent in the present case. The Complainant's service mark registration (September 12, 2006) was preceded by the registration of the disputed domain names (January 5, 2006) by eight months. Without prior knowledge of the Complainant and its business, the Respondent cannot be charged with bad faith registration of the disputed domain name. See, Superblock LLC v. Eastwind Groups Ltd., NAF Claim No. FA1042587 (“If the registrant is unaware of the existence of the trademark owner, he cannot sensibly be regarded as having any bad faith intentions directed at the Complainant.”).
In many prior Policy decisions, learned panels have refused to find bad faith registration when faced with similar circumstances. See, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (finding no bad faith registration, even in the absence of a response, when the disputed domain name was registered in September 1997 and the complainant's service mark in December 1997); and Diamond Shamrock Refining and Marketing Company v. CES Marketing Group Inc., NAF Claim No. FA96766 (where the panel refused a finding of bad faith registration of the disputed domain name,<cornerstore.com>, with respect to the generic trademark, CORNER STORE, stating: “The record in this case fails to establish actual or constructive knowledge of the Complainant's trademark by the Respondent when registering the domain name. The critical fact is that Complainant's trademark registration issued after the disputed domain name was registered. Therefore, the element of registration in bad faith is missing.”); PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437; and Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323. The Panel believes that the same reasoning should control in this case.
In view of the above, the Panel finds that the Complainant has failed to sustain its burden to prove that the Respondent registered and is using the disputed domain names in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Dated: November 12, 2009