WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Randstad Holding nv v. Mohamed Sbih, mobilpad
Case No. D2014-1230
1. The Parties
The Complainant is Randstad Holding nv of Diemen, Netherlands, represented by Randstad UK Holding Limited, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mohamed Sbih, mobilpad of Marrakech, Morocco, self-represented.
2. The Domain Name and Registrar
The disputed domain name <randstad-maroc.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2014. On July 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 28, 2014.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 19, 2014. The Response was filed with the Center on August 19, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 1, 2014. 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
The Complainant was founded in Netherlands in 1960 and is the world's second largest recruitment and Human Resources services company, currently operating in 38 countries through 4,587 branches. The Complainant is listed in Euronext Amsterdam and had an annual turnover of approximately EUR 16.6 billion in 2013. To promote its services, the Complainant, inter alia, sponsors the Williams Formula 1 team.
The Complainant owns various trademark registrations for RANDSTAD, including Community trademark registration No. 003468311 RANDSTAD, applied for on October 29, 2003 and registered on October 13, 2005, and International trademark registration No. 643208 RANDSTAD, registered on August 31, 1995, designating, inter alia, Morocco (hereinafter referred to as the "RANDSTAD Marks"). The Complainant offers its services on the Internet, inter alia, at "www.randstad.com".
The disputed domain name was registered in February 20, 2014, and is used in connection with a website providing information on the services of RAND STAD Sarl, a company duly registered in Morocco.
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the RANDSTAD Marks as it incorporates such marks and as the additional word "maroc" is descriptive and does not distinguish the disputed domain name from the RANDSTAD Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as, according to the Complainant's knowledge, no person or entity anywhere in the world, other than the Complainant, has the legal right to use a mark that includes the term "randstad" to identify services in the recruitment sector, as the Complainant acquired rights in its RANDSTAD Marks well before the Respondent registered the disputed domain name, as the Respondent has no connection or affiliation of any kind with the Complainant, and as the Complainant has never granted the Respondent license or consent, express or implied, to use the RANDSTAD Marks in any manner.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the RANDSTAD Marks are well-known and highly distinctive and that the extent to which the Respondent copied the Complainant's branding on the website associated with the disputed domain name (including logo, color and font) makes it clear that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the RANDSTAD Marks. With regard to bad faith use, the Complainant contends that the Respondent is intentionally attempting to attract Internet users to its own website, for commercial gain, by creating a likelihood of confusion with the Complainant's mark and consequently diverting Internet users away from the Complainant's websites.
The Respondent states that the disputed domain name was registered on behalf of RAND STAD Sarl, directed by Mr. Hicham EL OUATI, and that such company is a limited liability company duly registered in Morocco. The Respondent states that RAND STAD Sarl has rights to use the name "rand stad" and that such company is doing business in the field of security services.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent states as follows:
(1) The disputed domain name contains the word "randstad", which corresponds to the company name of RAND STAD Sarl, and the word "Maroc", which designates the territory where the Respondent's company was established and where it operates and enjoys rights.
(2) The disputed domain name was available for registration and was chosen by the Respondent only because it matches the company name and country of establishment of RAND STAD Sarl. Furthermore, as stated on the website available at the disputed domain name, RAND STAD Sarl is fully independent of the Complainant and neither affiliated nor associated with the Complainant. The Respondent argues that the website at the disputed domain name contains a full page with this information, which should be sufficient to eliminate any confusion. The Respondent states that RAND STAD Sarl is entitled to use the name "RAND STAD" as well as the word "Maroc".
(3) The disputed domain name was not registered with the aim of profiting from such registration but to reflect the company name RAND STAD Sarl and its country of establishment. The Respondent has not offered to sell the disputed domain name to anyone. Furthermore, there has been no relationship between the parties at any time.
(4) The Respondent further argues that this is a case of Reverse Domain Name Hijacking in that the Complainant requests the domain name transfer because of the good search engine ranking of the Respondent's website. The Respondent further argues that the website, content, services, brand, logo and colors of the Respondent differ from the Complainant's and that colors or fonts are not subject to exclusive rights. In order to avoid future confusion, the Respondent contends to have updated its website and included a note stating that it is not connected with the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive RANDSTAD Marks.
The additional word "Maroc" is merely a geographical identifier. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of geographical identifiers, such as "Maroc" (cf. Dell Inc. contre Jallal Bennouna, WIPO Case No. D2014-0792; Les Editions Neressis contre Corail Jeans David Bitton, WIPO Case No. D2009-0423; Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760).
Furthermore, it is well established that the generic Top-Level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent referred to own rights or legitimate interests based on the use of the disputed domain name in connection with the website of the Moroccan company RAND STAD Sarl. However, the Complainant provided evidence that the disputed domain name was used in connection with a website offering recruitment services, prominently featuring the Complainant's logo (although head first) and imitating the look and feel of the Complainant's corporate identity by using the Complainant's website's color and logo font (Annex 8 to the Complaint). Therefore, the actual use of the disputed domain name was in all likelihood in conflict with the Complainant's RANDSTAD Marks, not bona fide under the Policy, and, to the Panel's view, is therefore not qualified to establish own rights or legitimate interests under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's RANDSTAD Marks as such Marks have been actively used for decades in many countries worldwide. Furthermore, given that the parties seem to be doing business in the same sector, that the website available at the disputed domain name itself contains a statement that the website is "independent from Randstad Holding" (which is the Complainant's exact name), and that the Respondent has not denied knowledge of the Complainant, bad faith registration can be established.
As to bad faith use, by fully incorporating the RANDSTAD Marks into the disputed domain name and by using the disputed domain name in connection with a website offering services competing to the Complainant's ones, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. It is well established by previous UDRP decisions that a respondent (as the registered owner of the website at a disputed domain name) is in general ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated and regardless of who profits directly from the commercial use (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0) at paragraph 3.8 with further references; Baccarat SA v. Hiro, WIPO Case No. D2010-1315; Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne, WIPO Case No. D2010-1182; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Owens Corning v. NA, WIPO Case No. D2007-1143; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services, WIPO Case No. D2005-0938). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Moreover, paragraph 15(e) of the Rules provides as follows: "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
In the present case, the Panel finds that the Complainant has made out its case under the Policy and is accordingly entitled to its requested remedy; thus, the Panel finds that there is no room for a reverse domain name hijacking order.
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 <randstad-maroc.com> be transferred to the Complainant.
Date: September 13, 2014