Robert Half International Inc v Digi Real Estate Foundation [2004] DRS 02177 (24 December 2004)

Nominet UK Dispute Resolution Service

Dispute no. 2177

Robert Half International Inc. -v- Digi Real Estate Foundation

Decision of Independent Expert

1.	Parties

Complainant:	Robert Half International Inc
Address:	2884 Sand Hill Road
	Menlo Park
	California
Postcode:	90245
Country:	USA

Respondent:	Digi Real Estate Foundation
Address:	P.O.Box 7-5324
	Panama City
Postcode:	N7 8DJ
Country:	PA

2.	Domain Name

accounttemps.co.uk (the “Domain Name”)

3.	Procedural Background

3.1	On 11 November 2004, the Complainant submitted a Complaint under the Nominet Dispute Resolution Service Policy (the “Policy”) to Nominet UK (“Nominet”) electronically, and sent a hard copy of the same by post.  The hard copy of the Complaint was received by Nominet on 12 November 2004 and entered into the system on the same day.  The Complaint documents were validated and sent to the Respondent on 17 November 2004.  No response had been received from the Respondent by Nominet by 14 December 2004.  On receipt by Nominet on 17 December 2004 of the relevant fee from the Complainant, the matter was referred for a decision by an expert.  On 24 December 2004, I was appointed as the Expert in relation to this matter.

4.	Outstanding Formal/Procedural Issues

4.1	The Complaint concludes with the full text specified at paragraph 3 c. ix. of version 1 of the DRS Procedure.  This was superseded by version 2 of the DRS Procedure, which applies to all disputes filed on or after 25 October 2004.  Given that the Complaint was filed on 11 November 2004,  the appropriate text from version 2 of the DRS Procedure should have been used.

4.2	However, neither Nominet nor the Respondent raised any point against the Complainant in this respect.  I am also of the view that this non-compliance is not sufficiently serious to merit a request for a further statement from the Complainant or otherwise affect my overall decision in this Complaint.  I therefore proceed on the basis of the Complaint as filed.  

5.	The Facts

5.1	The Complainant is Robert Half International Incorporated, a specialised staffing/recruitment firm with several hundred offices in North America, Europe and Australasia.  The Complainant is the registrant of, inter alia, the domain names <accountemps.com> and <accountemps.co.uk>.

5.2	The Domain Name was registered in the name of the Respondent (by whom it continues to be held) on 14 July 2004.  The Respondent appears to be a company although this is unclear from the information available.  

6.	The Parties’ Contentions

Complainant

6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is almost identical to a name(s) or mark(s) in which it has rights and the registration of the Domain Name in the name of the Respondent is an Abusive Registration.  The Complainant asserts that it is a “currently the largest specialised staffing/recruitment firm in the world.”  A division of the Complainant’s company is Accountemps, which provides “specialised financial staffing”.  

6.2	The Complainant states that it has owned rights in the mark ACCOUNTEMPS for employment agency services since the first of its UK trade mark filings on 1 October 1986 and since it registered <accountemps.co.uk> on 12 May 1997.

6.3	The Complainant owns a number of trade mark registrations for its ACCOUNTEMPS mark, including Community Trade Mark (“CTM”) Registration No. 0030510 for the word mark ACCOUNTEMPS in class 35 (registered on 19 October 1998), UK Trade Mark Registration No. 1272939  for the word mark ACCOUNTEMPS in class 35 (registered as of 1 October 1996) and UK Trade Mark Registration No. 1428692 for the stylised word mark  ACCOUNTEMPS also in class 35 (registered as of 19 June 1990).  The Complainant also holds a further identical UK Trade Mark Registration No. 1181644 for a stylised ACCOUNTEMPS word mark in class 16 (registered as of 14 September 1982), but does not refer to this in its submission.  All of the above mentioned trade marks pre-date the registration of the Domain Name (although it would appear that, contrary to the Complainant’s submissions, mark 1181644 is the earliest of these registrations and not 1272939).

6.4	The Complainant asserts that the Domain Name is “almost identical” to the Complainant’s domain names and trade mark registration[s].

6.5	The Complainant’s contentions as to abusive registration are as follows:

“Currently, no use is being made of the disputed domain name by the Respondent, nor can we find any evidence of the Respondent's existence through a simple dialogue search of the Internet. We submit that the registration of www.accounttemps.co.uk is abusive. It is clearly an attempt to obtain traffic to the Applicant's website by the mere inclusion of an extra letter 't' in the name. The Respondent's web site resolves to a web page containing links to staffing and employment services in the accounting field. It is highly likely that a prospective customer of the Applicant could by virtue of either imperfect recollection, or a simple typing error in the URL, access the Respondent's website. Given the Applicant's worldwide reputation, and existing customer base, the Respondent will obviously benefit from this. In the alternative, the resulting confusion caused by the Respondent's site could seriously damage the Applicant's reputation. Accordingly, in view of the foregoing, we request that the domain name www.accounttemps.co.uk is transferred to the Applicant.”

Respondent

6.6	No response was received from the Respondent.

7.	Discussion and Findings
	
What needs to be proved

7.1	To succeed under the Policy the Complainant must prove on the balance of probabilities, first, that he has rights in respect of a “name or mark” that is identical or similar to a Domain Name and secondly, that the Domain Name is an Abusive Registration.

7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

Abusive Registration means a Domain Name which either:

i.	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; OR

ii.	has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant’s rights;

Complainant’s Rights

7.3	As set out above, the Complainant has provided evidence of the existence of certain trade mark registrations that it holds.  From these registrations it is clear that as at the date of the registration of the Domain Name on 14 July 2004, the Complainant had rights in a name or mark “identical or similar” to the Domain Name.  Accordingly the Complainant has successfully made out the requirement of paragraph 2(a)(i) of the Policy.

Abusive Registration

7.4	Before moving to consider this element of the Complaint, I note that at one point in its submission the Complainant asserts that “currently, no use is being made of the disputed domain name by the Respondent…” but then in another part it goes on to describe the contents of the Respondent’s website.  Presumably what the Complainant actually means is that the Domain Name is not being currently used to address a specific stand-alone website resolving from that Domain Name but instead displays the results of a search engine for various employment services and also searches for travel, health and beauty etc.  For ease of reference I have referred to this as “the Respondent’s website” in the paragraphs that follow.  

7.5	The Complaint does not include a screen print, whether as an annex or otherwise.  For the purposes of this Decision, I have therefore relied upon the content of the Respondent’s website evidenced in the screen print provided to me by Nominet as part of the background materials to this Complaint that they routinely supply to Experts.  This is dated 17 November 2004 and I have assumed that the contents of the Respondent’s website which the Complainant describes were either identical, or in substantially the same form, at the time that the Complaint was submitted to Nominet on 11 November 2004.  While the Respondent will not have been provided with a copy of this screen print, it will naturally already be familiar with the content of its own website.  

 7.6	In its Complaint, the Complainant alleges that the Respondent’s activities will result in diversion of internet traffic away from the Complainant’s websites through “the mere inclusion of an extra “t” in the name”.  Although it is not expressly pleaded, the essence of the Complainant’s argument is that the Respondent’s behaviour amounts to “typo-squatting”; the practice of acquiring a domain name which is a variation on a popular domain name, with the expectation that typographical mistakes will result in diverted website traffic away from the Complainant’s site to the Respondent’s site.  

7.7	Save for those reasons set out in the preceding paragraph, the Complainant does not allege that the purpose of registration was for any other reason, nor does it point expressly to any of the paragraphs of the Policy anywhere in its submissions.

7.8	A non-exhaustive list of factors which may evidence that a Domain Name is an Abusive Registration are set out in paragraph 3 of the Policy.  Included in this list at paragraph 3(a)(i) C are circumstances indicating that the respondent registered or acquired the Domain Name:

“[primarily] for the purpose of unfairly disrupting the business of the Complainant;”

Further, paragraph 3(a)(ii) of the Policy refers to:

“Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;”

7.9	These paragraphs have been cited in earlier “typo-squatting” complaints heard under the Policy; see for example the decision in DRS 1770 (Yahoo! Inc -v- Simon Charles Smith) and in DRS 1026 (Addiktion Cycles Ltd -v- Leisure Wheels (Hemel Hempstead) Ltd), and it is undoubtedly the case that “typo-squatting” constitutes abusive use under the Policy.  

7.10	Is this then a true case of “typo-squatting”? The difficulty in this case is the quasi-generic nature of the Complainant’s trade mark, and arguably the entirely generic nature of the Domain Name.  It is therefore not inherently apparent from the Domain Name itself that this was indeed the Respondent’s intention.  Nevertheless, I believe that typo-squatting is and was the Respondent’s intention.  The reasons for this are:

(a)	The Respondent’s website does not appear to offer “account temp” services.  As the Complainant correctly alleges, the Domain Name resolves to a web page containing links to UK staffing and employment agencies.  The agencies listed are not restricted to those in the accounting and finance fields in which the Complainant operates, but instead offer general employment agency services.  Accordingly, it is far from clear why it was that the Domain Name was chosen if it was not to take advantage of confusion with the Complainant’s name;

(b)	The Complainant contends that it has a worldwide reputation, and it is inherent in the way in which the Complainant has worded its Complaint that it contends that the Respondent is aware of that reputation.  This assertion is not disputed; and

(c)	The Respondent has not sought to dispute the Complainant’s contention that the choice of the Domain Name was for the purpose of taking advantage of the imperfect recollection or typing errors on the part of prospective customers of the Complainant.

7.11	Therefore, for the reasons given above, I conclude that the Domain Name is an Abusive Registration.  

7.12	Finally, it would appear likely that the Respondent is taking pains to conceal its true identity.  The basis for this is that (i) the Respondent gives as its address a P.O. Box number in Panama, notwithstanding that the Respondent’s website appears directed to persons in the UK, and (ii) the postal code provided appears to be incorrectly formatted for Panama and instead follows a format used in parts of the Holloway Road, North London, in the United Kingdom.  In addition, I note that Nominet’s submission of the Complaint to the Postmaster at the Domain Name was met with a delivery failure report.

7.13	However, as these issues are not formally raised in the Complaint, I have taken no account of these factors in coming to my decision in this matter.

8.	Decision

8.1	I find that the Complainant has Rights in the name ACCOUNTEMPS, which is identical to or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.2	I therefore determine that the Domain Name should be transferred to the Complainant.

…………………..
Matthew Harris

24 December 2004