Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
I. THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK
The Complainant has established that it has rights in the ADECCO Trademark since 1996.
The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the disputed domain name. 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 recognisable within the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of the first element of the Policy (see paragraph 1.7 of WIPO Overview 3.0).
UDRP panels have consistently found that the addition of letters or other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to the relevant trademark, recognisable within the disputed domain name, would not prevent a finding of confusing similarity under the first element (see paragraph 1.8 of WIPO Overview 3.0 and the decisions cited thereto).
The TLD is to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark, as it is a technical requirement of registration (see paragraph 1.11.1 WIPO Overview 3.0 and the decisions cited thereto).
The disputed domain name consists of:
- the term "ADECCO"
- the letters "NY" (which are usually used as the abbreviation of the city or state of New York)
- the .COM TLD.
The addition of the non-distinctive and descriptive (geographic) letters “NY” neither effects the attractive power of the Complainant’s ADECCO Trademark, nor is sufficient to prevent the finding of confusing similarity between the disputed domain name and such mark.
The content of the website associated with the domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element. In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (see paragraph 1.9 of WIPO Overview 3.0 and the decisions mentioned thereto).
In the dispute at hand, considered that the disputed domain name resolves to a website displaying the Complainant's ADECCO Trademark and related to the Complainant's products and services, it is clear that the Respondent had in his mind the Complainant, its activities and the ADECCO Trademark, and intended to create confusion with such mark by registering the disputed domain name.
Therefore, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's trademark.
II. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME
It is a consensus view of UDRP panels that the complainant shall establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the respondent (see paragraph 2.1 WIPO Overview 3.0: "[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").
The disputed domain name was registered with privacy / proxy service. Upon the CAC’s request for registrar verification, the Registrar disclosed the underlying registration data, identifying as registrant Lawal Ibrahim, an individual residing in Nigeria.
The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's ADECCO Trademark or to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to the disputed domain name.
UDRP panels have largely held that the composition of domain names consisting of a trademark plus an additional term (e.g., geographic) cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see paragraph 2.5.1 of WIPO Overview 3.0).
The disputed domain name, confusingly similar to the Complainant's ADECCO Trademark, since it incorporates such mark in its entirety by merely adding the letters "NY", carries a high risk of implied affiliation. The Complainant has indeed submitted the results of a Google search carried out regarding the terms "ADECCO" and "ADECCO NY", all of them related to the Complainant.
Furthermore, the disputed domain name resolves to an active website related to the Complainant and its products and services. First of all, it displays the Complainant's ADECCO Trademark. Secondly, right from the first few lines ("Welcome to Adecco Yes, this is the “about us” page. But this is really all about you. If you’re looking for a job—a great job—we can help you get in the door at some incredible companies. Need to hire good people? We know thousands. Let us introduce you. No matter where you are, we can help you get where you want to go in your career.") the Internet users might believe that the disputed domain name is of the Complainant or affiliated with the Complainant. Finally, it contains a form requiring Internet users to enter their personal data and, therefore, it is likely used to mislead Internet users and involve them in a fraud scheme (phishing).
Moreover, MX records have also been set for the disputed domain name, which enables it to be used for sending e-mails impersonating the Complainant.
Therefore, the Panel finds that the use of the disputed domain name by the Respondent is clearly not a bona fide offering of goods or services or legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark under the Policy.
While the Complainant has established its prima facie case, the Respondent has not submitted a Response and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests to the disputed domain name.
The Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name.
III. REGISTRATION AND USE IN BAD FAITH
The disputed domain name has been registered and is being used in bad faith for the following cumulative reasons.
The Respondent has used a privacy or proxy service when registering the disputed domain name. Although the use of such service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see paragraph 3.6 of WIPO Overview 3.0).
The Respondent has registered the disputed domain name which is to be considered confusingly similar to Complainant's ADECCO Trademark, since it incorporates such mark in its entirety and differs from it merely by adding the non-distinctive and descriptive (geographic) letters “NY” (which are usually used as abbreviation of the city or state of New York), and the TLD .COM (which is disregarded for the purpose of determination of confusing similarity between the disputed domain name and the trademarks of the Complainant as it is a technical requirement of registration).
Given the distinctiveness and reputation of the Complainant's prior mark, it is inconceivable that the Respondent could have registered the disputed domain name for a mere chance without actual knowledge of the Complainant's rights in such well-known mark and the intention to exploit such reputation by diverting traffic away from the Complainant’s website.
The disputed domain name resolves to a website, displaying the Complainant's ADECCO Trademark and related to the Complainant's products and services. This clearly evidences the Respondent has targeted the Complainant and its trademark through the disputed domain name by impersonating or falsely suggesting sponsorship or endorsement by the Complainant.
Moreover, the disputed domain name has MX servers configured. Configuring e-mail servers on the disputed domain name that confuses people into thinking it belongs to the Complainant might be part of a fraudulent scheme (phishing), such as to obtain sensitive or confidential personal information, or to solicit payment of fraudulent invoices. Therefore, it is implausible that there is any good faith use to which the disputed domain name might be used.
To the contrary, the Respondent's conduct makes it clear that he has registered and has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's ADECCO Trademark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location (paragraph 4(b)(iv) of the Policy).
Finally, having:
- registered the disputed domain name, which is confusingly similar to and, thus, infringing the Complainant’s prior mark
- used it to resolve to website, which falsely suggests affiliation with the Complainant
- configured MX servers for the disputed domain name, which enables it to be actively used for unlawful purposes,
the Respondent has also violated the paragraph 2 of Policy (“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”).
Taken into account all circumstances of this case, it is implausible that there is any legitimate purpose in the registration and use of the disputed domain name by the Respondent.
The Respondent has neither replied to the Complainant's cease and desist letter, nor submitted a Response in this administrative proceeding to provide any evidence of actual or contemplated good faith use.
Therefore, the Panel finds that the Complainant has discharged the burden of proof to show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
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