WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Randstad Holding N.V. v. Super Privacy Service LTD c/o Dynadot / Zhichao
Case No. D2020-2059
1. The Parties
The Complainant is Randstad Holding N.V., the Netherlands, represented by Chiever B.V., the Netherlands.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Zhichao, China.
2. The Domain Name and Registrar
The disputed domain name <randstadjob.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2020, 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 August 19, 2020 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 August 21, 2020.
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 August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2020.
The Center appointed Jane Lambert as the sole panelist in this matter on September 28, 2020. 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 was founded in the Netherlands in 1960 and an international recruitment and human resources services company with 4,496 branches in about 40 countries. Its turnover in 2019 was about EUR 23.7 billion. It is listed on the Euronext stock exchange in Amsterdam.
According to printouts which have been annexed to the Complaint as Annex VII(a) and VII(b), the Complainant has registered the word RANDSTAD as a trade mark for various goods and services in a large number of countries, territories, and groups of countries. For example, the mark was registered under International trademark registration number 643208 on August 31, 1995, for a number of services in classes 35, 41, and 42, designating, inter alia, China.
In addition, the Complainant has carried on its business under the RANDSTAD mark for many years. It has advertised its services extensively under that mark on radio, television, in the press, over the Internet, and on billboards and posters at prominent locations such as airports and railway stations. Screen captures of the Complainant’s website are annexed to the Complaint as Annex VIII.
By virtue of the extent of its business transactions and advertising it has acquired considerable goodwill in all the countries in which it operates by reference to the RANDSTAD name and mark. Members of the public associate that name and mark in relation to recruitment and human resources with the Complainant and none other.
The disputed domain name was registered on March 13, 2020. The Respondent has used the disputed domain name as the URL for a landing page with a number of sponsored links and searches. A printout of the page is annexed to the Complaint as Annex IX. The Panel also visited that site on October 3, 2020, and found a similar page. The disputed domain name appeared at the top of the page. Immediately below was a column of the following hypertext links: “Employee Onboarding System, Employee Benefits, Recruitment Software, Applicant Tracking System, Job Postings, HR Software” and “Find Jobs”.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the following grounds:
- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
In respect of the first element, the Complainant says that the disputed domain name fully incorporates the word RANDSTAD and is therefore confusingly similar to the Complainant’s corporate name and mark. The addition of the term “job” and the generic Top-Level Domain (“gTLD”) “.com” do not alter this and are merely common/descriptive and geographical indicators. The distinctive part of the disputed domain name is identical to RANDSTAD, the Complainant’s mark.
As to the second, the Complainant says that to the best of its knowledge nobody can use the word RANDSTAD in relation to employment without infringing one of its trade marks or incurring liability for passing off. It states that the Respondent has no connection or affiliation of any kind with the Complainant and that the Complainant has never licensed nor authorized the Respondent either expressly or impliedly to use its mark. The Complainant also observes that the Respondent is not using the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of services nor is the Respondent known by the disputed domain name.
Although it raises the point in relation to the second element rather than the third, the Complainant notes that the disputed domain resolves to a website which carries links to third party vendors of services similar and complementary to services provided by the Complainant and it has annexed a screen capture of such site as Annex IX. It also submits that “this unauthorized use by the Respondent is intended to misleadingly divert Internet users away from the Complainant’s true website. Accordingly, the Respondent unjustifiably capitalizes on the Complainant’s trade mark value.”
In support of its allegation that the disputed domain name was registered and is being used in bad faith, the Complainant says that registering a domain name that incorporates the name and mark of a business that is as prominent as the Complainant is intrinsically an act of bad faith. It is highly unlikely that it did not already know of the registration of the Complainant’s mark and it could easily have discovered the registration had it searched any register of trade marks.
The Complainant refers again to the website in Annex IX and notes that the Respondent is likely to be paid every time someone clicks on one of the sponsored links or searches. It concludes:
“Thus, by using the Dispute Domain Name [sic], the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the Respondent’s web site and services on the Respondent’s web site.”
Finally, the Complainant notes the Respondent’s failure to respond properly to the Complainant’s letters before claim.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant’s agreement to register the disputed domain name incorporated the following provision:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
The Panel holds that the first element is present.
The International trademark registration number 643208 mentioned above is a trade mark in which the Complainant has rights. The disputed domain name is manifestly similar to that trade mark. Its combination with the word “job” makes the disputed domain name confusingly similar to that mark. The trade mark is clearly recognizable in the disputed domain name. It follows that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel is satisfied that the second element is present.
The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) offers the following guidance:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Because of the number of countries and territories in which the RANDSTAD mark is registered and the reputation of the Complainant by reference to that mark in relation to recruitment and employment, registering or carrying on business under the disputed domain name without the Complainant’s consent would infringe one of the Complainant’s trade marks or amount to passing off. The Complainant has made it clear in the Complaint that it has neither licensed nor authorized the Respondent to register or use the disputed domain name.
Paragraph 4(c) of the Policy lists a number of circumstances that might justify the registration of the disputed domain name. The Complainant denies that any of those circumstances apply to this case. There is nothing in the materials before the Panel to suggest otherwise.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is now up to the Respondent to produce relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent has been given ample opportunity to produce such evidence and has not done so. It follows that the Complainant must be deemed to have satisfied the second element.
C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Because of the registration of the Complainant’s widely-known trade mark many years before the disputed domain name, as well as the composition and use of the disputed domain name, the Panel finds it more likely than not that the Respondent had the Complainant’s mark in mind when registering the disputed domain name. See section 3.2.1 of the WIPO Overview 3.0.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of its website or of a service on that website. The Complainant has alleged and the Respondent has not denied that the Respondent is likely to receive revenue from the clicking of any of the sponsored links or searches, which correspond to the Complainant’s area of business, found at the website to which the disputed domain name resolves. The juxtaposition of the mark RANDSTAD with the noun “job” suggests an intention to attract traffic to the Respondent’s website by the use of the confusingly similar disputed domain name.
Paragraph 4(b)(iv) of the Policy having been satisfied, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Panel agrees with the Complainant that the registration of the mark of a well-known business as a domain name and the failure to respond appropriately to the letters before claim supports the finding of registration and use in bad faith.
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 <randstadjob.com> be transferred to the Complainant.
Date: October 12, 2020