Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Uncontested - Dilution - Tarnishment - Anti-Cybersquatting Consumer Protection Act - Cyberpiracy - Cybersquatting

Complainant was registrant of United States service mark and United States trademark. Registrant registered the domain name, officespecialists.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

Complainant must establish both bad faith registration and bad faith use. 

The panel is only going to determine the issue before it as set out in their own policy. They will not look at other similar legal thresholds such as dilution or the cybersquatting act. Name by Respondent dilutes Complainant's mark by tarnishment or by weakening the distinctive significance of the Complainant's mark. Complaint 28. The Panel need not, and does not, reach the question whether tarnishment or weakening of the distinctive significance of a mark justifies relief in this case. Nor does the Panel reach the question whether the Respondent's conduct amounts to "cyberpiracy" or "cybersquatting." 

Uncontested allegations of the Complaint meet, prima facie, the requirements set forth in paragraph 4(a). The domain name registered and used by Respondent, officespecialists.com, is, as a practical matter, identical or confusingly similar to the service mark registered and used by Complainant. It is uncontested that the Respondent has no rights or legitimate interests in respect of the domain name.

Policy 4(b)(i). The Complainant has alleged, and Respondent has not contested, that the domain name was offered for sale on the Internet for $24,000 and used to link to internetdomains4u.com, which advertises numerous Internet domain names for sale, including the officespecialists.com domain name.  n the basis of the uncontested allegations, the Panel accepts as true, and therefore concludes, that the name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Network Solutions Domain Name Registration Agreement 

Panel Decision referred to
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Bridges, Sole Panelist: - 
 

1. The Parties
The Complainant is Randstad General Partner (U.S.), LLC, 2015 South Park Place, Atlanta, GA 30339 ("Randstad" or "Complainant"). The Respondent is Domains For Sale For You, 18311 Santa Clara Ave., Santa Ana, CA, 92705.

2. The Domain Name and Registrar
The domain name at issue is officespecialists.com. The domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170 ("NSI").

3. Procedural History
The Complainant electronically submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 9, 2000. The WIPO Center received a hard copy of the Complaint on February 14, 2000. The WIPO Center sent an Acknowledgement of Receipt to the Complainant dated February 14, 2000. 

On February 15, 2000, the WIPO Center sent a Request for Registrar Verification to NSI. NSI confirmed by reply e-mail that the Domain Name officespecialists.com was registered with NSI, that the Respondent, Domains For Sale For You, was the current registrant of the name and that Network Solutions' 4.0 Service Agreement was in effect. The reply also contained contact information for the Respondent.

The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on February 17, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in effect as of December 1, 1999.

On February 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of March 7, 2000 by which the Respondent must file a Response to Complaint to avoid default. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address specified in Network Solutions' WHOIS confirmation, as well as to postmaster@officespecialists.com. When the e-mail transmission was returned showing a permanent fatal error, a further Notification was transmitted using an e-mail link found on the officespecialists.com web site. In addition, the Complaint was sent by facsimile to the listed fax number and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonable available means calculated to achieve actual notice to Respondent."

On March 9, 2000, having received no Response from the Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On March 13, 2000, the WIPO Center appointed Andrew P. Bridges of Wilson Sonsini Goodrich & Rosati as the Panelist in this matter.

4. Factual Allegations from the Complaint
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent.

Complainant, as successor in interest, owns rights in U.S. Federal Trademark Registration No. 1,037,635 for OFFICE SPECIALISTS. Complainant, its predecessors and affiliates have used the OFFICE SPECIALISTS mark in connection with the providing of temporary and permanent office personnel in the United States since 1963. Complaint 13-18.

Respondent has not made use of the trademark OFFICE SPECIALISTS in the bona fide offering of goods or services. Respondent has not otherwise acquired trademark or service mark rights to the OFFICE SPECIALISTS mark. Respondent uses the domain name officespecialists.com to link directly to internetdomains4u.com, titled "InternetDomains4u", which advertises numerous Internet domain names for sale, including the officespecialists.com domain name. Respondent, as an individual, business, or other organization, is not commonly known by the domain name, but instead has registered it solely for the purpose of selling or leasing it. At the web site linked to the officespecialists.com domain name, Respondent offers to sell the officespecialists.com domain name for $24,000, together with a description that states "Temp Agencies, Office Supplies, or business only practices this is the name for you." Complaint 20,26.

The domain name is identical and/or confusingly similar to Complainant's mark. Complaint 25, 29.

5. Parties' Contentions

 A. Complainant
Complainant contends that Respondent has registered and used a domain name identical to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interest in the domain name at issue, and that Respondent has registered the domain name in bad faith. Complainant also contends that Respondent's registration and use of the domain name constitutes dilution by tarnishment and by weakening the distinctiveness of the mark, and also that Respondent's conduct constitutes "cyberpiracy" and "cybersquatting."

 B. Respondent
Respondent has not contested the allegations of the Complaint and is in default in this proceeding.

6. Discussion and Findings
For the reasons stated below, the domain name officespecialists.com should be transferred to Complainant.

A. Respondent's Failure to Answer
According to the Rules, Respondent is required to submit a response to the Complaint within twenty days of commencement of the administrative proceeding. See Rule 5. In the event that a Party does not respond in a timely fashion, absent exceptional circumstances, "the Panel shall proceed to a decision on the complaint." Rule 14(a). The Rules also state that "the Panel shall draw such inferences" from a Party's failure to comply with the Rules "as it considers appropriate." Rule 14(b). Moreover, paragraph 15(a) of the Rules states: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." 

Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint. 

B. Applicable Rules and Principles of Law
Paragraph 4(a) of the Policy states that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and; 
(ii) that the respondent has no legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and used in bad faith. 

C. Findings
Uncontested allegations of the Complaint meet, prima facie, the requirements set forth in paragraph 4(a). The domain name registered and used by Respondent, officespecialists.com, is, as a practical matter, identical or confusingly similar to the service mark registered and used by Complainant. It is uncontested that the Respondent has no rights or legitimate interests in respect of the domain name.

For purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets forth a non-exhaustive list of circumstances that shall be considered as evidence of bad faith. The first on this list states:

Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

Policy 4(b)(i). The Complainant has alleged, and Respondent has not contested, that the domain name was offered for sale on the Internet for $24,000 and used to link to internetdomains4u.com, which advertises numerous Internet domain names for sale, including the officespecialists.com domain name. Respondent advertised the officespecialists.com domain name stating "Temp Agencies, Office Supplies, or business only practices this is the name for you." On the basis of the uncontested allegations, the Panel accepts as true, and therefore concludes, that the name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant has further asserted that the registration and use of the domain name by Respondent dilutes Complainant's mark by tarnishment or by weakening the distinctive significance of the Complainant's mark. Complaint 28. The Panel need not, and does not, reach the question whether tarnishment or weakening of the distinctive significance of a mark justifies relief in this case. Nor does the Panel reach the question whether the Respondent's conduct amounts to "cyberpiracy" or "cybersquatting."

7. Conclusion
The Panel FINDS that Respondent owns and uses a domain name, officespecialists.com, identical or confusingly similar to Complainant's registered service mark, OFFICE SPECIALISTS; has no rights or legitimate interests in the domain name; and has registered and used the domain name in bad faith. These three factors entitle Complainant to an order transferring the domain name from Respondent to Complainant. Policy 4(a).

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel HEREBY ORDERS that the registration of the domain name officespecialists.com be transferred to Complainant.