WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PrideStaff, Inc. v. James Butler-Fleming
Case No. D2021-2031
1. The Parties
Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
Respondent is James Butler-Fleming, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <pridestaffing.org> (the “Domain Name”) is registered with Register.com (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 Domain Name. On June 28, 2021, 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 July 13, 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 22, 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. Respondent sent emails to the Center on July 27, and July 30, 2021, but did not submit any formal response. The Center notified Respondent’s default on September 17, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on October 12, 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.
On November 5, 2021, the Panel issued Administrative Panel Procedural Order No. 1. The due dates for Respondent to submit a reply was November 12, 2021, and for Complainant to comment was November 19, 2021. The Center did not receive anything from either of the Parties.
4. Factual Background
Complainant was founded in 1978 and is one of the most well-known staffing firms in the United States with over 85 offices nationwide.
Complainant is the owner of the United States trademark registration No. 2,116,589, PRIDESTAFF (word), filed on March 6, 1995 and registered on November 25, 1997, for services in International class 35.
Per Complaint, Complainant is also the owner of the domain name registration for <pridestaff.com>.
The Domain Name was registered on September 8, 2019, and resolves to an inactive website. As Complainant demonstrated, Respondent has set up MX-records for the Domain Name, allowing Respondent to send and receive emails and potentially be used for fraudulent email communications. Respondent appears also to have provided incorrect contact information or contact information which has not been updated (delivery to Respondent’s email address provided by the Registrar ([...]@pride-staffing.org) failed because the associated user “couldn’t be found”). Last, per Complainant’s search, it appears that the named Respondent has the same name as a former executive at a number of companies that provide staffing and/or recruiting services.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the PRIDESTAFF mark.
The Panel finds that the Domain Name is confusingly similar to the PRIDESTAFF trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The letters “ing” which are added to the ending of the “pridestaff” portion of the Domain Name, does not prevent a finding of confusing similarity as the PRIDESTAFF mark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Top-Level Domain (“TLD”) “.org” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the PRIDESTAFF trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not replied to the Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name leads to an inactive website.
Noting Respondent’s email signature in his email sent to the Center, bearing the tag line “T/A Pride Staffing since 2018 Providing temporary workforce management solutions to LGBTQ+ organisations and Pride event organisers”, the Panel issued a Panel Order requesting Respondent to submit clarification as to the corporate or doing/business/as designation included in his email signature sent to the Center and the reason why he chose to register the Domain Name, to which Respondent did not reply. Accordingly, based on the available record there has been no evidence put forward that Respondent is commonly known by the Domain Name and/or that Respondent has used the Domain Name in connection with the above.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the PRIDESTAFF mark had been used and registered by Complainant prior to the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple Internet search due to Complainant’s use of the PRIDESTAFF mark (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the PRIDESTAFF mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
The Panel considers the following factors: (i) the high similarity of the Domain Name to Complainant’s mark; (ii) the failure of Respondent to reply to Complainant’s contentions; (iii) the incorrect or not updated contact details provided by Respondent; (iv) the fact that Respondent appears to be a former executive at a number of companies that provide staffing and/or recruiting services, namely of a person active in Complainant’s field of business (something which Respondent has not rebutted); and (v) the fact that Respondent has set up MX-records for the Domain Name. The Panel also takes into account that Respondent did not reply to the Panel Order to submit clarification as to the corporate or doing/business/as designation included in his email signature sent to the Center or the reason why he chose to register the Domain Name.
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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, <pridestaffing.org>, be transferred to Complainant.
Date: November 26, 2021