WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Randstad Holding nv v. Pinaki Kar
Case No. D2013-1796
1. The Parties
Complainant is Randstad Holding nv, of Diemen, the Netherlands, represented Internally.
Respondent is Pinaki Kar of India.
2. The Domain Name and Registrar
The disputed domain name <ranstadjobs.org> (“the Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2013. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 23, 2013.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 24, 2013. The Center received email communications from Respondent on October 24, 2013, which it duly acknowledged. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2013. Respondent did not submit a formal response addressing the allegations in the Complaint. Accordingly, the Center notified Respondent’s default on November 14, 2013.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 18, 2013. 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
Complainant was founded in the Netherlands in 1960 and is the world’s second largest recruitment and human resources services company. It has used the trademark RANDSTAD (the “RANDSTAD Mark” or the “Mark”) worldwide for many years and currently operates in 40 countries, through 4,496 branches. Complainant is listed on Euronext Amsterdam, and has an annual turnover of approximately EUR 17 billion (2012). Complainant has promoted its services extensively under the RANDSTAD Mark, through marketing campaigns across the world including TV and radio advertisements, sponsorship of the Williams Formula 1 team, and advertisements in the press and on billboards in prominent locations such as airports and train stations.
Complainant also owns various trademark registrations for the RANDSTAD Mark throughout the world (e.g., The United States of America, Japan, New Zealand, Singapore and Australia). These registrations cover, broadly, personnel recruitment and employment agency services. Use of these trademarks can be found on Complainant's website “www.randstad.com”. This website is supplemented by websites in each territory in which Complainant operates, and for each of its divisions. Through these websites, Internet users can search for jobs in a range of sectors, as well as obtain further information regarding Complainant’s services.
The Domain Name was registered on June 16, 2013.
5. Parties’ Contentions
Through extensive longstanding use and registration, Complainant has acquired rights in the RANDSTAD Mark, which predates registration of the Domain Name. The Domain Name incorporates the word “Ranstad” which is a common misspelling of the Mark and is therefore confusingly similar to Complainant's Mark. This is evidenced by a search on Google for “Ranstad”. The additional word “jobs” is descriptive and does not distinguish the Domain Name from the Mark. In fact this creates further confusion as it indicates to the Internet user that the Domain Name is being used in relation to services, which are identical to those provided by Complainant.
No person or entity anywhere in the world, other than Complainant, has the legal right to use any mark that includes the term “Randstad” to identify services in the recruitment sector. Complainant acquired rights in the RANDSTAD Mark well before Respondent registered the Domain Name. Respondent has no connection or affiliation of any kind with Complainant, nor has Complainant ever granted Respondent a license or consent, express or implied, to use the RANDSTAD Mark in any manner. Respondent is neither using the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of services, nor is Respondent known by the Domain Name. Complainant has exclusive rights in RANDSTAD, and Respondent’s unauthorized use is intended to misleadingly divert Internet users away from Complainant's website.
The Domain Name is a deliberate misspelling of the RANDSTAD Mark, and because of the well-known nature and distinctiveness of the mark, it is evident that Respondent registered the Domain Name with full knowledge of the Mark and Complainant’s rights in the Mark. Respondent is intentionally attempting to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s Mark and consequently diverting Internet users away from Complainant’s websites. The likelihood of confusion is increased by Respondent’s use of Complainant’s logo and registered trade mark at the top of the website itself, to deceive users into believing that the website is in some way associated with Complainant. The website connected with the Domain Name shows advertisements for job vacancies which are not Complainant’s ads and Respondent appears to be operating a pay per click business via the website with links to job boards, Complainant’s competitors’ websites, and other sites linked to employment and training services, including a “cash advance” offer which sends Internet users to a personal loan company.
Complainant requests the Domain Name be transferred to Complainant.
Respondent did not formally reply to Complainant’s contentions. In his e-mail to the Center Respondent claims that he is “just a common man with no knowledge whatsoever of internet marketing.” He “wanted to have a job blog of [his] own as a stepping stone into internet marketing.” Respondent claims that a “freelancer bought [him] the mentioned domain and set it up for [him] – [he] had never heard of the company Ranstad earlier and had no intention to be associated with them.” Respondent claims that the “content on [his] blog is in no way related to the company ‘Ranstand’ and doesn’t refer to them also. There was a small graphic image on the site set up by the freelancer which I got removed after seeing the resemblance on the plaintiff's site. I never had anything to do with their business and when I bought the domain I did so simply because the name sounded ‘catchy’ to me. IT WAS AVAILABLE WITH MY DOMAIN REGISTRAR AND I DIDN’T SEE ANY REASON TO NOT BUY THE DOMAIN.”
Respondent further asks: “If the domain name is considered so very important by the plaintiff, why didn't they have it in the first place? Also, when they saw it was owned by me why didn’t they offer to buy it? I spent a considerable amount on setting up the website and now it seems I’m about to lose it just like that - who is going to pay for my losses?”
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the RANDSTAD Mark from its long-standing use and registration on the Principal Register of the United States Patent and Trademark Office (“PTO”) (e.g., U.S. Trademark Registration No. 2,365,880 which issued on July 11, 2000 for “Temporary employment agencies; personnel placement and recruitment; personnel management consultation, namely advising on staff matters; and temporary staff deployment.”). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.1 (“If the complainant owns a trademark then it generally satisfies the threshold requirement of having trademark rights.”).
The Panel finds Respondent has engaged in typosquatting by registering the Domain Name <ranstadjobs.org>, a practice by which a registrant deliberately introduces slight deviations into well-known marks for commercial gain. See, e.g., Marriott International, Inc. v. Seocho, NAF Claim No. 149187 (finding <marriottt.com> confusingly similar to <marriott.com>). The Domain Name <ranstadjobs.org> is virtually identical to Complainant’s RANDSTAD Mark, differing only by the elimination of the letter “d” after “ran”. Because Respondent has committed typosquatting, the Domain Name is, by definition, confusingly similar to Complainant’s RANDSTAD Mark. Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.
Furthermore, the addition of “.org” to the RANDSTAD Mark does not eliminate the confusing similarity. See Microsoft Corporation. v. Amit Mehrotra, WIPO Case No. D2000-0053. Likewise, Respondent’s use of the descriptive word “jobs” in the Domain Name does not avoid confusion. To the contrary, it increases the likelihood of confusion to consumers because the word “jobs” is descriptive of the services advertised and sold by Complainant and promoted by Respondent using the Domain Name. As a result, an Internet user interested in Complainant’s personnel recruitment and employment agency services may well be confused into believing that Respondent’s website is related to or affiliated with Complainant.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent does not have any rights or legitimate interests in the Domain Name because: (1) Complainant acquired rights in the RANDSTAD Mark well before Respondent registered the Domain Name and Complainant has never granted Respondent a license or consent to use the RANDSTAD Mark in any manner; (2) Respondent has not been commonly known by the Domain Name; (3) Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because the Domain Name is being used on a competitive site that contains a listing of “fresh” and archived job vacancies; and (4) Respondent’s use of the Domain Name has not been in connection with a bona fide offering of goods or services, but rather with an unauthorized use.
Complainant’s assertions and evidence, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Respondent admits that he “wanted to have a job blog of [his] own as a stepping stone into internet marketing” and that “when [he] bought the domain [he] did so simply because the name sounded ‘catchy’ to [him].” Respondent registered the Domain Name <ranstadjobs.org> on Jun 16, 2013 at least 49 years after Complainant began using the RANDSTAD Mark (according to the date of first use provided in U.S. Trademark Registration 2,365,880). Given Complainant’s long-standing use, that it is the world's second largest recruitment and human resources services company, that it currently operates in 40 countries through 4,496 branches, that it has promoted its services extensively under the RANDSTAD Mark through marketing campaigns across the world, and that Respondent incorporated the entirety of the Mark in the Domain Name while eliminating the letter “d” to use in conjunction with a job site, the Panel finds it highly likely Respondent was aware of Complainant and its rights in the Mark when it registered the Domain Name. The Domain Name may just have sounded “catchy” for a reason.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant’s RANDSTAD Mark in conjunction with a competitive site advertising “fresh vacancies” that list the nature of the job, company, type (full/part time), experience level, location and company contact information. The site also, for example, lists archived jobs and permits the public to upload their curricula vitae. As admitted by Respondent, the site used to prominently feature the Randstad Mark (not misspelled) and a design mark frequently used by Complainant. Although Respondent removed both from his site confirming his knowledge of Complainant and its rights in the Mark, at the bottom of the page it currently states: “Jobs powered by RANSTAD”. And in running a computer mouse over a prominent statement at the top of the site: “Your ExampleNiche Site”, the phrase “Jobs powered by RANSTAD” is shown. Moreover the term “ranstad” occurs 21 times as a metatag on Respondent’s site. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of such site or the services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893, see also Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ranstadjobs.org> be transferred to Complainant.
Date: December 2, 2013