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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PrideStaff, Inc. v. Pearl Njinjoh, Trearl

Case No. D2021-2033

1. The Parties

The Complainant is PrideStaff, Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States.

The Respondent is Pearl Njinjoh, Trearl, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <pridestaffjobs.com> is registered with 1&1 IONOS SE (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 29, 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 the Complainant on July 2, 2021 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 July 6, 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021.

The Center appointed Andrea Mondini as the sole panelist in this matter on August 24, 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 Complainant is a well-known staffing firm in the United States. It was founded in 1978 and has today 85 offices nationwide.

The Complainant is the owner of the United States Trademark Registration No. 2,116,589, for the word mark PRIDESTAFF, which was registered on November 25, 1997, for employment agency, relocation, placement and recruitment services. The Complainant maintains a website under the domain name <pridestaff.com>.

The disputed domain names was registered on March 20, 2021, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends in essence:

- that the Complainant’s trademark PRIDESTAFF is well-known in the United States;
- that the disputed domain name is confusingly similar to its trademark PRIDESTAFF because it incorporates this trademark in its entirety, whereas the descriptive term “jobs” does nothing to obviate confusion;
- that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no affiliation or other relationship whatsoever between the Parties;
- that the Respondent has set up MX-records for the disputed domain name, which allows the Respondent to send and receive emails from the disputed domain name, indicating that the disputed domain name may be used for fraudulent email communication; and
- that the Respondent registered and is passively holding the disputed domain name in bad faith.

B. Respondent

The Respondent has not submitted a response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

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

(ii) The 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.

A. Identical or Confusingly Similar

The Complainant has shown that it holds the United States Trademark Registration No. 2,116,589 for the word mark PRIDESTAFF.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark PRIDESTAFF, because it incorporates this trademark in its entirety, whereas the addition of the word “jobs” and of the generic Top-Level Domain “.com” does not prevent a finding of confusing similarity.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends, credibly, that it has not authorized the Respondent to use the disputed domain name, and that there is no relationship whatsoever between the Parties. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Furthermore, the nature of the disputed domain name carries a risk of implied affiliation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has credibly shown that the Respondent registered the disputed domain name with knowledge of the Complainant’s pre-existing trademark rights. The Complainant has further shown that the disputed domain name does not resolve to an active website and that the Respondent has set up MX-records for the disputed domain name, which would allow the Respondent to send and receive emails from the disputed domain name, indicating that the disputed domain name may be used for fraudulent email communication.

Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s trademark, any use of the disputed domain by the Respondent, including for email communications, would almost certainly imply an affiliation with the Complainant that does not exist, and so would be a use in bad faith. To support a finding of use of the disputed domain name in bad faith in this situation, it is not necessary for the Complainant to prove that such a communication has actually been sent; it is sufficient that such a communication could be sent, for a Panel to assess the Respondent’s bad faith on the balance of probabilities. The establishment of MX records for a domain name points towards a potential active use of it, which, in the circumstances of this case, and particularly noting the composition of the disputed domain name, affirms the Respondent’s bad faith. Where the use of the disputed domain name sets up the Respondent to engage in behavior that would falsely imply an affiliation with the Complainant, that is a use of the disputed domain name in bad faith (bioMérieux v. Registration Private, Domains By Proxy, LLC / Milton Bardmess, WIPO Case No. D2020-3499). Furthermore, given the Complainant’s substantial reputation in its trademark and the Respondent’s failure to submit a Response to the Complaint, it is not possible to conceive of any good faith use to which the Respondent could put the disputed domain name. The Respondent is, therefore, holding the disputed domain name in bad faith.

Under these circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

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 <pridestaffjobs.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: September 3, 2021

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