WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kforce, Inc. v. Contact Privacy Inc. Customer 0130261450 / ICS INC.
Case No. D2013-0267
1. The Parties
The Complainant is Kforce, Inc. of Tampa, Florida, United States of America, represented by Thomas & LoCicero PL, United States of America.
The Respondent is Contact Privacy Inc. Customer 0130261450 of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <kforcetimeentry.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 the Complainant on February 15, 2013 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 February 19, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on February 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2013.
The Center appointed Warwick Smith as the sole panelist in this matter on March 19, 2013. 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.
The Panel is satisfied that the Amended Complaint has been properly notified to the Respondent in accordance with the Rules.
4. Factual Background
The Complainant
The Complainant is a Florida-based company, which offers technical staffing services and employment services for job seekers and professionals throughout the United States. According to the Complaint, it also operates in the Philippines and elsewhere.
The Complainant registered the domain name <kforce.com> in March 1999. The Complainant operates a website through which its services can be accessed at that domain name. The Complainant also operates what it refers to as a “time entry” website at “https://timeentry.kforce.com/TimeEntry.Web/Login.aspx” (“the time entry website”).
The Complainant also holds a number of other “kforce” domain names.
The Complainant is the registered proprietor of a number of KFORCE trademarks in the United States. The earliest of the United States registrations, in International Class 35, goes back to September 1998. The Complainant also holds a Community Trademark registration for KFORCE. The Community Trademark was registered on September 9, 2009.
The Respondent and the Domain Name
The Domain Name was created on February 8, 2012.
The Complainant produced screenshots of the website at the Domain Name (“the Respondent’s website”) taken on April 11, 2012 and January 28, 2013. On April 11, 2012 the Respondent’s website consisted simply of a parking page, with a number of click-on links, one of which was “Job Openings”. On January 28, 2013, the Domain Name did not resolve to any active website.
WhoIs particulars listed for the Domain Name on the DomainTools website in April 2012, noted that the Domain Name was then for sale. No sale price was then listed. WhoIs particulars posted on the DomainTools website on January 25, 2013, showed the Domain Name still listed for sale. This time, a selling price of USD 10,446 was included with the “for sale” notice.
On April 26, 2012, the Complainant sent a cease and desist email to the Respondent. No Response was received. However, the Complainant was able to persuade the operator of the parking service, Oversee.net, to remove the Domain Name from its parking service.
To the date of the filing of the Complaint on February 7, 2013, the Domain Name has not resolved to any active website.
The Complainant provided with its Amended Complaint a list of 23 cases in which UDRP panels have transferred or cancelled domain names registered by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
(i) The Domain Name is confusingly similar to the Complainant’s KFORCE mark. Because the Domain Name includes that mark, Internet users would likely assume any website at the Domain Name is affiliated with the Complainant. Further, the addition of the expression “time entry” exacerbates the potential for confusion, because a person encountering the Domain Name is likely to assume that any associated website is related to the Complainant’s time entry site.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has no relationship with the Complainant that would entitle the Respondent to use the Complainant’s trademarks in any manner, and the Respondent has not made any meaningful use of the Domain Name. The registration of the Domain Name and its being linked to a parking page (and subsequently to an “error” page) disrupts the Complainant’s relationships with its customers, potential customers, and anyone else potentially wishing to transact business with the Complainant. The Respondent’s failure to reply to the cease and desist letter is also an indicator that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith. Although the Domain Name was created nearly a year ago, it has still not been linked to any active website, and the Respondent’s continued holding of the Domain Name without any content constitutes bad faith (citing Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003). It is difficult to conceive of any use of the Domain Name that the Respondent might make which would not cause confusion.
(iv) The Complainant’s KFORCE mark is not an expression that is in common use, nor is it identified with a legitimate business or activity apart from the business of the Complainant. The only reason for the Respondent to persist in its registration of the Domain Name was to profit from the Complainant’s goodwill in its marks.
(v) The Respondent had constructive notice of the Complainant’s registered KFORCE mark, and that notice supports a finding of bad faith.
(vi) The Respondent has listed the Domain Name for sale at a price which is far in excess of any reasonable out-of-pocket costs the Respondent may have incurred.
(vii) The Respondent has a history of bad faith registrations. The Respondent’s pattern of registering domain names in bad faith has continued, with the Respondent wrongfully and deliberately appropriating the Complainant’s KFORCE mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently proved this part of the Complaint. It is the registered proprietor of the word mark KFORCE in the United States and in the European Union, and that mark has been incorporated in full in the Domain Name. The inclusion of the additional words “time” and “entry” in the Domain Name are not sufficient for the Respondent to avoid a finding of confusing similarity: those words are generic, dictionary words only, and the Complainant’s KFORCE mark is both recognizable as such within the Domain Name and the dominant component of the Domain Name.1
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has not authorized the Respondent to use the Complainant’s KFORCE mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business or organization operated by the Respondent, might be commonly known by the Domain Name, and accordingly there is no basis in the evidence for any claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. Furthermore, the only “use” the Respondent has made of the Domain Name has been to allow it to be parked with Oversee.net. The Respondent did not reply to the Complainant’s cease and desist letter and made no response to the Complainant’s contentions.
The foregoing combination of circumstances sufficiently establishes to this Panel a prima facie case of “no rights or legitimate interests”, and the burden of production therefore shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests. The Respondent, having failed to file any response, has not discharged that burden, so the Complainant’s prima facie case prevails. This part of the Complaint has been proved.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include inter alia:
(i) circumstances indicating that [a respondent has] registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) where the 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 the respondent has engaged in a pattern of such conduct; or …
The Respondent in this case was clearly aware of the Complainant and its KFORCE mark when the Domain Name was registered in February 2012 – that much is clear from the use of the KFORCE mark (which itself is not an ordinary English expression) with the expression “time entry” in the Domain Name. The time entry website includes each of those expressions, and it would stretch the bounds of coincidence too far to credit the Respondent with coming up with this unusual combination of words without prior knowledge of the Complainant and the time entry website.
The Respondent has made no use of the Domain Name, and the evidence shows that the Domain Name was listed for sale within a few weeks after it was registered. The selling price of USD 10,446 would have been well in excess of any likely out-of-pocket costs directly related to the Domain Name. The uncontested evidence also shows that the Respondent has engaged in a pattern of bad faith registration and use of domain names.
In all the foregoing circumstances, the Panel is satisfied that the Respondent probably registered the Domain Name for the primary purpose of selling it to the Complainant at a profit. It does not matter that the Respondent did not make any direct approach to the Complainant to sell the Domain Name to it – the Domain Name is so obviously associated with the Complainant and its activities that the Respondent must have realized that the most likely buyer would be the Complainant (it is difficult to conceive of anyone other than the Complainant using the Domain Name in any legitimate way that would not result in significant confusion among Internet users who were aware of the Complainant).
The circumstances fall within paragraph 4(b)(i) of the Policy, and in the absence of any Response that is sufficient evidence of bad faith registration and use.
The Complainant having proved each element of the Complaint, there will be an order for transfer of the Domain Name to the Complainant.
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 Domain Name <kforcetimeentry.com> be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: March 26, 2013
1 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), summarizes the consensus view of UDRP Panels on the “identical or confusingly similar“ question, in the following terms:
“1.2. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion. …”
