WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hays plc. v. Registration Private, Domains By Proxy, LLC / Nayyer Khan

Case No. D2019-1146

1. The Parties

The Complainant is Hays plc, United Kingdom, represented by Osborne Clarke LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Nayyer Khan, Australia.

2. The Domain Name and Registrar

The disputed domain name <haysrecruiters.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2019, 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. The Center sent an email communication to the Complainant on May 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 24, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2019.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 27, 2019. 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

The Complainant states that it is the leading global expert in qualified, professional and skilled recruitment. It employs approximately 11,000 people around the world to partner with clients and candidates providing recruitment services in 33 countries and is an FTSE 250 company.

The Complainant also states that it (and its predecessors in title) was founded over 50 years ago and started as the “Career Care Group”. In 1986, the Career Care Group was acquired by Hays plc and re-branded to HAYS, which is the core part of the Complainant’s business today.

The Complainant is the owner of a number of trade marks covering the HAYS brand and registered internationally including, but not limited to the United Kingdom, Europe and the United States.

Example trade marks include:

- United Kingdom trade mark No. 00001395978 for HAYS in class 35, registered on October 16, 1992;

- European Union trade mark No. 000005637 for HAYS in class 35, registered on October 19, 1999;

- European Union trade mark No. 10544732 for HAYS RECRUITING EXPERTS WORLDWIDE in class 35, registered on May 17, 2012;

- United States trade mark No. 4043786 for HAYS in class 35, registered on October 25, 2011.

The Complainant’s marks are collectively referred to as the “HAYS Mark”.

The disputed domain name <haysrecruiters.com> was created on February 14, 2019 (the “Relevant Date”).

The Complainant states that in March 2019, it came to the Complainant’s attention that the Respondent was allegedly providing recruitment services under the sign HaysRecruiters through the website “www.haysrecruiters.com” connected to the disputed domain name. On April 10, 2019, the Complainant states that its representatives sent a letter to the Respondent complaining of trade mark infringement. No response was received. On April 11, 2019, the Complainant states that its representatives notified the host provider of the website at the disputed domain name, NameCheap Inc of the Respondent’s activities. NameCheap, Inc reviewed the complaint and disabled access to the website at the disputed domain name. However, the Complainant states that the Respondent has since moved hosting provider and the disputed domain name now revolves to a website at “www.haysrecruiters.com”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the HAYS Mark. The Complainant contends that the disputed domain name is confusingly similar to its HAYS Mark. It states that the disputed domain name incorporates the HAYS Mark in its entirety. It also states that given the relevant services relate to recruitment and/or employment advisory services, the term “recruiters” in the disputed domain name is non-distinctive. In support, the Complainant has provided to the Panel, evidence of actual confusion. It states that on three separate occasions it has been contacted by members of the public asking if the Respondent was the Complainant and if job offers being made were legitimate.

The Complainant also contends that the Respondent has no rights to the disputed domain name. In this respect, the Complainant contends that the Respondent has no genuine business relating to the disputed domain name.

The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent’s use of the disputed domain name is to take unfair advantage of the HAYS Mark for the purposes of engaging with members of the public to fraudulently extract personal information as part of a phishing scam.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent does not appear to be offering recruitment services and has deliberately attempted to cause confusion and take unfair advantage of the Complainant’s HAYS Mark for the purpose of defrauding personal information from individuals for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the HAYS Mark around the world, including in the United Kingdom, Europe, and the United States. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the HAYS Mark with a history of use going back to 1986. The Complainant also contends, and the Panel agrees that the HAYS Mark is distinctive, there being no relevant conceptual meaning for HAYS in relation to recruitment services. The Panel is satisfied that the Complainant is well known by its Mark and is an international recruitment service provider.

The Panel finds that the disputed domain name contains as a first and dominant element the Complainant’s HAYS Mark, combined with the term “recruiters” which is descriptive of the services provided by the Complainant. The use of this term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel notes that the Complainant also has registrations for the trade mark HAYS RECRUITING EXPERTS WORLDWIDE. The disputed domain name is also confusingly similar to this trade mark. The Panel also notes that it is well established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparison under the first element.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s HAYS Mark.

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:

(i) That before notice of the dispute, the Respondent used or made 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) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or

(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant has stated, and the Panel accepts, that the Respondent has no genuine business relating to the disputed domain name. In this respect, the Complainant has provided evidence (attached to the Complaint as Annexes 6 and 7) that the website to which the disputed domain name revolves copies from the Complainant’s competitor Airswift’s website.

The Panel is satisfied that the Complainant has not authorized the Respondent to use its HAYS Mark. Attached to the Complaint as Annex 5 is a letter dated April 10, 2019 from the Complainant ’s representative to the Respondent informing the Respondent of its infringing use of the Complainant’s HAYS Mark.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is also satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its HAYS Mark and associated trade marks, the Complainant’s exclusive rights in those trade marks and the goodwill residing in those trade marks. The Panel accepts the Complainant’s assertion that its HAYS Mark is internationally well known in the recruitment field.

(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […] It is your responsibility to determine whether your domain name infringes or violates someone else’s rights”. A most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trademarks. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondent’s flagrant copying of the Airswift’s website together with the careful replacement of the word “Airswift” with “HaysRecruiters” throughout the website to which the disputed domain name revolves supports a finding that the Respondent knew of the Complainant, the Complainant’s HAYS Mark and the Complainants services at the Relevant Date.

(iii) The Panel notes the nature of the disputed domain name and agrees that the term “recruiters” in the dispute domain name is non-distinctive and is likely to mislead consumers into believing that the disputed domain name is related to the Complainant’s business or services in the recruitment field.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(iv) The website to which the disputed domain name revolves has clearly copied its content from the Complainant’s competitor recruitment service provider Airswift “www.airswift.com” and replaced the branding on the website to include the HaysRecruiter logo. Entire passages of text used is identical except for the use of “HaysRecruiters” in place of “Airswift”. Entire images have also been copied. The Panel accepts that the Respondent’s use of the HAYS Mark together with the non-distinctive term “recruiters” was intentional on the part of the Respondent to, at the very least, attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s HAYS Mark and associated trade marks as to the source, sponsorship, affiliation, or endorsement of the website. Consumers visiting the website corresponding to the disputed domain name will be confused, misled or deceived into believing that the site is connected with the Complainant.

(v) In this respect, the Panel notes that the Complainant has also provided evidence in Annex 8 to the Complaint of actual confusion. The Complainant has asserted that on three separate occasions it has been contacted by members of the public (typically from the Middle East) asking if the Respondent was the Complainant and if job offers made to them were legitimate. In each instance, the Complainant states that the Respondent had contacted the individual offering a job role in Canada for a company called the “Miller Construction Group”. During a subsequent “interview”, the Respondent’s personnel misrepresented that they were from the Complainant and in a follow-up email to the individual, the Respondent requested further personal information such their CV and passport. The Complainant has also noted that on one occasion, when emailing an individual, the Respondent’s email address was given as “[K.P.]@haysrecruiters.com”, “[K.P.]” being an employee of the Complainant. The Complainant asserts that the Respondent is engaging in a phishing scam to fraudulently extract personal information. The Panel accepts that the evidence suggests the Respondent’s use of the disputed domain name is not a bona fide use. In this respect, the Panel is entitled to have regard to the lack of any response from the Respondent.

(vi) In addition to the Complaint, which is unanswered, the Complainant sent a warning letter to the Respondent notifying the Respondent of its trade mark rights. This was never answered. The Complainant states that its representative also attempted to contact the Respondent directly via telephone using the telephone number shown on the website to which the disputed domain name revolves but the telephone number does not work.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

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 <haysrecruiters.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: July 8, 2019