WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PrideStaff, Inc. v. Privacy service provided by Withheld for Privacy ehf / Mike Gregor
Case No. D2021-2030
1. The Parties
Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Mike Gregor, United States.
2. The Domain Name and Registrar
The disputed domain name <pridestaf.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2021, 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 Complainant on July 7, 2021, 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 July 11, 2021.
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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on August 19, 2021. 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 following facts appear from the Complaint (as amended) and its Annexes, which have not been contested by Respondent.
Complainant is one of the most well-known staffing firms in the United States with over 85 offices nationwide, and since its founding in 1978 has provided professional staffing services for both employers with professional staffing needs and individuals looking for job placement services under the trademark PRIDESTAFF (the “PRIDESTAFF Mark”). Complainant has provided evidence that its PRIDESTAFF Mark is well-known for its professional staffing and job placement services, having received numerous independent awards and recognitions from unrelated third parties, including the “Best of Staffing Talent Diamond Award” for the last five (5) years in a row (2017-2021), a level of recognition received by less than 1 per cent of all North American staffing firms.
Complainant owns United States Trademark Registration No 2,116,589, PRIDESTAFF, registered on November 25, 1997, for employment agency services; personnel relocation services; personnel placement and recruitment services; temporary personnel placement and recruitment services; contract staffing services; personnel management consulting services; and personnel outplacement services in International Class 35, and claiming a first use date of March 1, 1995.
Since 1996 Complainant has owned the domain name <pridestaff.com> from which Complainant operates its official PRIDESTAFF website at “www.pridestaff.com” (“Official Website”) where customers can learn all about Complainant, request staffing services, and apply for posted positions.
The disputed domain name was registered on January 13, 2021, and as of the filing of the Complaint the disputed domain name did not resolve to an active website, but resolved to a parked web page which displayed “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers.” The page currently displays an error message and as of the date of this decision, it appears that the disputed domain name still resolves to an inactive website. The record submitted provides probative evidence, however, that the disputed domain name has been set up with MX-records and SPF records giving Respondent the ability to send fraudulent email communications to engage in a phishing, spamming or employment scam.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of a valid and subsisting trademark registration for the PRIDESTAFF Mark that has also become incontestable long prior to the registration of the disputed domain name. As such, Complainant has not only the trademark rights required under the Policy, but also its incontestable status precludes Respondent, by operation of law, from arguing that the PRIDESTAFF Mark is descriptive. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Debbie Robus and Greg Robus v. Nicky Suard (DrivenOne, Inc.), WIPO Case No. D2000-0941 (“…the incontestable status of Complainant’s trademarks forecloses an attack based upon contentions that the marks are or have become merely descriptive”).
With Complainant’s rights in the PRIDESTAFF Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s PRIDESTAFF Mark. It is well-accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Wal-Mart Stores, Inc. v. MacLeod d/b/a/ For Sale, WIPO Case No. D2000-0662.
The disputed domain name incorporates Complainant’s PRIDESTAFF Mark in its entirety with one minor distinction, the omission of the second occurrence of the letter “f” at the end of the Mark. This omitted letter does not significantly affect the appearance or pronunciation of the domain name, making the disputed domain name the phonetic equivalent of the PRIDESTAFF Mark. The disputed domain name, therefore, is essentially identical to Complainant’s registered PRIDESTAFF Mark (and its <pridestaff.com> domain name used to access the Official Website through which Complainant offers its employment-related services). This minor difference in spelling could also be easily overlooked or considered a “typo” by consumers and serve as evidence of “typosquatting”, which may also support violations under the second and third elements of the Policy. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444) (“typosquatting” is where a registrant deliberately introduces slight deviations into marks for commercial gain).
Prior UDRP panels have found confusing similarity is established “[w]here a domain name is the phonetic equivalent of the Complainant’s trademark.” Zumiez Inc. v. Richard Jones, WIPO Case No. D2007-0024 (<zoomies.com>).
Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark to be insufficient to prevent a finding of confusing similarity. See, e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (<expresscripts.com> omission of “s” constitutes typosquatting which is by definition evidence of a confusingly similar domain name); Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768 (<toshba-cn.com>).
The addition of the TLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.
Complainant’s PRIDESTAFF Mark is recognizable as incorporated in its entirety into the disputed domain name and its phonetic equivalent. The Panel finds, therefore, the disputed domain name confusingly similar to the PRIDESTAFF Mark in which Complainant has rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation or connection with Complainant. Complainant asserts that Complainant has no affiliation or other business relationship with Respondent, and that Respondent has never received Complainant’s consent, franchise, or any other form of authorization from Complainant to make use of the PRIDESTAFF Mark in any manner, including the registration of a domain name (much less the registration of a domain name to access a website structured to possibly engage in an illegitimate employment scheme against Complainant’s customers or prospective customers). Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.
Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Privacy service provided by Withheld for Privacy ehf” of Iceland. The Registrar disclosed the underlying registrant, “Mike Gregor” of the United States, who has been added to the amended Complaint as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. These facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).
A respondent not commonly known by the disputed domain name supports a finding of a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Complainant also contends that since the disputed domain name resolves to an inactive or “blank” web page, which reports an error, that Respondent is not doing business as “Pride Staf”, “Pride Staff”, or any similar variation thereof and has not used the “pridestaf” name or mark (or any similar name) in connection with the bona fide offering of goods or services so that it benefits from any goodwill as such term is reflected in the disputed domain name.
Prior UDRP panels have held that use of a disputed domain name to resolve to a blank or inactive web page does not represent a bona fide use of the disputed domain name. See Microsoft Corporation v. Charilaos Chrisochoou WIPO Case No. D2004-0186, see also Fetzer Vineyards v. --, WIPO Case No. D2019-2285; WIPO Overview 3.0, section 2.9.
Complainant also contends and has provided detailed evidence showing the potential for Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of an employment scam. Complainant shows in the annexes attached to its Complaint, the disputed domain name’s zone file is configured with MX-record and SPF records, which means that the disputed domain name can be used for email communication. Complainant further argues that because the disputed domain name effectively impersonates Complainant, any email originating from the disputed domain name carries a high risk of implied affiliation misleading Complainant’s employees, subsidiaries, business partners, agencies, and customers and constitutes illegitimate, bad faith use. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472.
Complainant further contends that Complainant is not required to show that the Respondent has actually sent communications because Respondent’s disputed domain name falsely implies an affiliation with Complainant. Prior UDRP panels have found the establishment of MX records for a domain name to be a use of the disputed domain name and where the use sets up the Respondent to engage in behavior that would falsely imply an affiliation with the Complainant that is use of the disputed domain name in bad faith. See bioMérieux v. Registration Private, WIPO Case No. D2020-3499.
Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.
Furthermore, prior UDRP panels have held that domain names that are identical – or as here, nearly identical – to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel has found in Section 6.A. above that the disputed domain name is confusingly similar and nearly identical to Complainant’s PRIDESTAFF Mark and is so closely associated with Complainant or its activities to carry a high risk of implied affiliation.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s PRIDESTAFF Mark (and the domain name <pridestaff.com> used to access the Official Website, as discussed in section 6.A. above), it is implausible to believe that Respondent was not aware of Complainant’s PRIDESTAFF Mark when it registered its confusingly similar domain name. This is especially true where Complainant’s mark has been used for over 25 years and Complainant is recognized as a nationwide leader in professional staffing and job placement services in the nation where Respondent is located. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.; see also, Allianz SE v. Well Domains are either owned by us or Client Managed, WIPO Case No. D2008-0535.
The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration:
(i) Complainant’s PRIDESTAFF Mark is well-known, distinctive, recognized as a leader in its industry in the US and in use for almost 25 years before the disputed domain name was registered;
(ii) Respondent’s deletion of the second occurrence of the letter “f” at the end of the disputed domain name as a “typo” from both Complainant’s PRIDESTAFF Mark and official <pridestaff.com> domain name to confuse consumers searching for Complainant, as well as email recipients evidences typosquatting;
(iii) Complainant’s Official Website for Complainant’s professional staffing and job placement services is accessed at “www.pridestaff.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name, cutting off the single repeated letter at the end to create the disputed domain name <pridestaf.com>; and
(iv) Respondent’s registration of the disputed domain name using the MX-record and SPX record configurations with a confusingly similar domain name to imply an affiliation with Complainant, it is inconceivable that Respondent could have registered the disputed domain name without Complainant’s marks in mind and with bona fide intentions, but instead intending to engage in per se illegitimate activity for commercial gain to foist an employment scam on Complainant and its customers.
Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Bad faith use is also clear from Respondent’s illegitimate conduct as discussed in detail in section 6.B. above, configuring the disputed domain name for sending fraudulent emails suggesting an affiliation with Complainant and its employment-related services to engage in an employment scam from unsuspecting clients for Respondent’s commercial gain. See, Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac, WIPO Case No. D2011-1275). Given the circumstances of this case, such a showing is sufficient to establish bad faith registration and use. See, WIPO Overview 3.0, section 3.3. See also BOLLORE SE v. Contact Privacy Inc. Customer 1247853759 / Angela Chaney, WIPO Case No. D2020-2050 (disputed domain name set up with MX record may be making use of Complainant’s renowned trademark for unlawful purposes; passive holding of disputed domain name evidence of bad faith).
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <pridestaf.com> be transferred to Complainant.
Scott R. Austin
Date: September 2, 2021