WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PrideStaff, Inc. v. Whois Agent (080912863), Whois Privacy Protection Service, Inc. / Peter Diaz
Case No. D2021-2032
1. The Parties
Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
Respondent is Whois Agent (080912863), Whois Privacy Protection Service, Inc. United States / Peter Diaz, United States.
2. The Domain Name and Registrar
The disputed domain name <takepridestaffing.com> is registered with eNom, Inc. dba Dynames.com, 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 1, 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 5, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 27, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 5, 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
Complainant is a firm offering professional staffing services to both employers and individuals seeking job placement. Complainant was founded in 1978 and now has over 85 offices throughout the United States. It owns a registration for the PRIDESTAFF trademark in the United States (Registration No. 2,116,589, registered November 25, 1997) in connection with job placement and related services in Class 35.
Complainant has owned and used the <pridestaff.com> domain name since 1996 and the “www.pridestaff.com” website is currently used to share information about Complainant with customers and for employers and job seekers looking to utilize Complainant’s job placement services.
The disputed domain name was registered on February 11, 2015. At the time the complaint was filed and currently the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
According to Complainant, the disputed domain name is virtually identical to Complainant’s PRIDESTAFF trademark in which Complainant has rights as demonstrated through its cited registration. Complainant asserts that the disputed domain name incorporates the PRIDESTAFF trademark in its entirety and that the addition of other words within the disputed domain name, namely “take,” does not eliminate the confusing similarity. Furthermore, Complainant asserts that the disputed domain name remains confusingly similar to its PRIDESTAFF trademark despite the addition of the ending “ing.” Finally, Complainant contends that the disputed domain name remains confusingly similar despite the addition of the “.com” TLD.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a franchisee and is not affiliated with Complainant in any way. Respondent does not appear to have any business interest in the term “Take Pride Staffing” and does not appear to use the name with a corresponding business. As such, there is no bona fide offering of services associated with the disputed domain name.
As the disputed domain name does not appear to resolve to an active website, Complainant asserts that Respondent is passively holding the disputed domain name and is preventing Complainant from obtaining rightful ownership and control of the disputed domain name. Complainant contends that such passive holding by a party that has no connection with Complainant indicates that the registration for the disputed domain name was made in bad faith in order to capitalize on the PRIDESTAFF trademark and mislead Internet users. Complainant also notes that Respondent has set up MX records for the disputed domain name, demonstrating that Respondent is able to send and receive emails, such as from a “[…]@takepridestaffing.com” email address. Complainant asserts that the mere ability to send email communications proves bad faith due to the potential for such communications to create a false affiliation with Complainant. Finally, Complainant notes Respondent’s use of a privacy shield. Complainant concedes that the use a privacy shield alone is not necessarily considered evidence of bad faith under the Policy, but asserts that concealment of identity, when there is no legitimate need to do so (such as protecting a critic against reprisal), may contribute to a finding of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns the United States registration in PRIDESTAFF, as referenced above. Therefore, Complainant has established that it has rights in the PRIDESTAFF mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainant’s 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. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the PRIDESTAFF trademark in its entirety, with the addition of the word “take” before, and the addition of the “ing” suffix after, the term “pridestaff”. This variation does not prevent a finding of confusing similarity between the disputed domain name from and the mark. See Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 citing Wal-Mart Stores, Inc. v. MacLeod d/b/a/ For Sale, WIPO Case No. D2000-0662; see also PrideStaff, Inc. v. Registration Private, Domains By Proxy, LLC / Code optimal Solutions, Code optimal solutions , WIPO Case No. D2020-0154.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its PRIDESTAFF mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use 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 it has acquired no trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not a franchisee of Complainant and that Respondent has no other business relationship with Complainant. As the disputed domain name does not resolve to an active website, Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name, and Respondent’s use of the disputed domain name also cannot be considered a bona fide offering of goods or services.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the PRIDESTAFF trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the PRIDESTAFF trademark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent is currently holding the disputed domain name passively. From the inception of the UDRP, panelists have found that the non-use of a domain name, including use under which the domain name does not resolve to an active website, would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the concealment of the respondent’s identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. The passive holding doctrine applies in this case because Complainant’s mark is highly distinctive, Respondent failed to come forward with any evidence of a conceivable good faith use for the disputed domain name, and it is implausible that Respondent can put the disputed domain name to any conceivable good faith use without infringing upon Complainant’s rights in its PRIDESTAFF mark. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s PRIDESTAFF trademark in its entirety with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users for Respondent’s commercial gain. This conclusion is strengthened by the fact that the disputed domain name was assigned MX records, demonstrating that Respondent has the ability to send from and receive email communications to the disputed domain name. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472; see also bioMérieux v. Registration Private, WIPO Case No. D2020-3499.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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 <takepridestaffing.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: August 20, 2021