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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert Half International Inc. and Robert Half Inc.
v.
Frank J McNamara and Accountancy Software Consultancy Limited

Case No. D2002-0261

 

1. The Parties

The Complainants are Robert Half Incorporated and Robert Half International Incorporated. Their addresses are 2884 Sand Hill Road, Suite 200 Menlo Park, California, 94025, United States of America. The Complainants are represented by Robert S Weisbein and Todd Martin of Darby & Darby PC whose address is 805 Third Avenue, New York 10022, United States of America.

The Respondents are Frank J McNamara and Accountancy Software Consultancy Limited. The address of the Respondents is 31 Jestyn Close, Cardiff, South Glam, CF5 4UR, United Kingdom. The Respondents have no authorized representative for this proceeding.

 

2. The Domain Names and Registrar

The domain names in dispute ('Domain Names') are:

<accountemps.info>

<accountemps.biz>

The Domain Names were first registered on October 4, 2001, <accountemps.info> and November 10, 2001 <accountemps.biz>.

The Registrar with which the Domain Names are registered is Easy Space Limited, 2 Park Court, Pyrford Road, West Byfleet, Surrey, KT14 6SD, United Kingdom.

 

3. Procedural History

The Complaint was filed in electronic format on March 18, 2002, and hard copies were filed on March 20, 2002. On March 19, 2002, the Center transmitted acknowledgment of receipt of complaint. On March 26, 2002, the Center transmitted a request for registrar verification to Easy Space Limited, in connection with this case. On March 28, 2002, Easy Space Limited sent via e-mail to the Center a verification response confirming that the Respondent is the registrant.

On April 5, 2002, the Center requested an amendment of paragraph 8 of the Complaint. The Complaint, as originally filed, referred to the Court of Virginia despite the location of the registrar, Easy Space Ltd, being the United Kingdom.

The Rules for Uniform Domain Name Dispute Resolution Policy (the 'Rules') provide that the Complainant specify at least one appropriate Mutual Jurisdiction (Rules, para 3(b)(xiii)). The Rules state that court jurisdiction at the location of the principal office of the Registrar may be elected as a court of Mutual Jurisdiction, 'provided the domain name holder has submitted in its registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name', when there is no such submission, the only possible court of Mutual Jurisdiction is that at the location of the domain name holder's address and the Complainant may not submit to the jurisdiction in the location of the principal office of the Registrar.

In this case, the principal office of the Registrar and the location of the domain name holder's address are the United Kingdom. Accordingly, the Complainant filed an amendment to the Complaint specifying the United Kingdom as the venue for Mutual Jurisdiction.

On April 15, 2002, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

On April 15, 2002, the Center formally commenced this proceeding and sought to notify the Respondent that its response would be due by May 5, 2002. The Center notified the Respondent of default on May 7, 2002.

On May 16, 2002, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

 

4. Factual Background

A. The Complainant

The Complainants are the owners of a number of registered trademarks for the mark "ACCOUNTEMPS". The mark is registered in the following jurisdictions: Austria, Benelux, Brazil, Canada, Czech Republic, Denmark, European Union, Finland, France, Germany, Hong Kong, Ireland, Israel, Italy, Japan, Mexico, Monaco, New Zealand, Norway, Poland, Portugal, Puerto Rico, Singapore, Slovak Republic, South Africa, South Korea, Spain, Sweden, Taiwan, Thailand, United Kingdom and United States. In addition, the Complainants have either registered or have pending applications for the registration of the following marks: ACCOUNTEMPS AND DESIGN, ACCOUNTEMPS (block letters), ACCOUNTEMPS (State of Virginia), ACCOUNTEMPS in Katakana, ACCOUNTEMPS specialised financial staffing and design and accountemps stylised.

Accountemps is a business division of the Complainants. The Complainants have been in the business of providing employment services to companies for over 50 years and have a presence in more than 330 offices world wide. Accountemps, a division of the Complainants, is the worlds largest specialised temporary staffing service for accounting, finance and book keeping professionals.

The Complainants state that for the period 2000/2001 total United States revenues for services rendered under the ACCOUNTEMPS mark were approximately $US2 billion. The Complainants registered ACCOUNTEMPS as a trademark as early as 1984 (United States trademark registration number 1,272,104).

Further, the Complainants state they have owned the internet domain name <accountemps.com> since November 6, 1995. This domain name leads users to the home page of Accountemps, which provides information about the services offered by the Complainants. The Complainants state that the Accountemps home page is an important element of its corporate communications and business strategy.

In addition, the Complainants state that they have owned and operated the <accountemps.co.uk> domain name since May 1997.

The Complainants submit that they have spent 'millions of pounds' in marketing the mark ACCOUNTEMPS worldwide. They identify a number of country based publications which have featured advertisements incorporating the ACCOUNTEMPS mark. The Complainants assert that the Respondents are in the business of providing software, consultancy and accounting services in direct competition to their business.

B. The Respondent

According to NeuLevel Inc and Afilias Inc WhoIs databases, the Respondents in this administrative proceeding are Frank J McNamara and Accounting Software Consultancy Limited. The Respondents have not filed a response in this proceeding.

 

5. Parties’ Contentions

Domain Name and Registered Trade Mark Confusingly Similar (paragraph 4(a)(i) of the Policy)

It is submitted by the Complainants that the Domain Names and the registered trademark are identical or confusingly similar.

The Complainants contend that their legal representative has been in communication with the Respondents. It is asserted that in those communications the Respondents acknowledged the Complainants rights with respect to the ACCOUNTEMPS mark. It is further asserted that the Respondents erroneously believed that ACCOUNTEMPS had been 're-branded' in the United Kingdom and was no longer in use. The Complainants allege that the Respondents have implicitly conceded that the Domain Names and the mark are identical by erroneously believing that mark had been abandoned.

The Complainants contend that the Respondents have registered the Domain Names wholly incorporating their registered mark. The Complainants further assert that confusion between the Domain Names and the Complainants registered marks and domain names will likely occur because of the similarities.

The Respondents have not filed their response.

Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)

The Complainants have not directly dealt with this aspect of the Policy but suffice to say there is no evidence of a licence granted by the Complainants allowing the Respondent to use the registered mark. The Complainants submit that Accounting Software Consultancy Limited (one of the Respondents) is not a similar name to the Domain Names which would potentially have justified the use by the Respondents of the Domain Names.

The Respondents have not filed a response.

Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)

The Complainants contend that the business of the Respondents which entails the offer of services by Mr. McNamara as a temporary consultant to accounting firms is likely to ultimately expand to employing account staff and supplying temporary staff to businesses.

The Complainants rely on evidence from Lucy Patricia Kilshore, a solicitor employee of CMS Cameron McKenna who act for the Complainants and who spoke to Mr. McNamara. During their conversation Mr. McNamara conceded he was aware of Accountemps and that it was a business division of the Complainants.

Mr. McNamara also stated he was under the 'erroneous' belief that Accountemps had been 're-branded' to Robert Half and that the Accountemps name was no longer in use. The Complainants submit that the arbitration panel decision in Kimberly - Clark Corp. v. Rossi,WIPO Case No: D3000-1263 (December 4, 2000) is persuasive authority for the following: where a respondent has admitted knowledge of a complainant's trademark and chosen to register a domain name incorporating that mark based on an erroneous belief that the complainant had no intention of registering the domain name for its own use, a panel will find that registration by the respondent had been done in bad faith.

The Complainants submit that the Respondents 'constructively' knew that the trademarks existed prior in time to the registration of the Domain Names. The basis for this submission appears to relate to the close geographic proximity of the Complainants' offices in Bristol, England to the Respondents' business address in the United Kingdom. Further, the Complainants submit that the Respondents seek to impute an association with the Complainants registered mark and therefore 'poach [its] reputation and good will'.

The Respondents have not filed a response.

 

6. Discussion and Findings

General

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain names are identical or confusingly similar to the trade marks; and

- The Respondent has no right or legitimate interest in respect of the domain names; and

- The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Names Identical / Confusingly Similar

The Complainants' registered trademarks ACCOUNTEMPS and the Domain Names <accountemps> are largely identical. The panel finds that the spelling of the trademarks and the main part of the Domain Names are identical and therefore are likely to confuse consumers who may reasonably assume that the Domain Names are in some way associated with the Complainants. The additions of 'biz' or 'info' are incidental and do not serve to significantly distinguish the two.

No Right or Legitimate Interest

The Respondents have not filed a response in this proceeding. Therefore, the panel has no information before it which would establish that the Respondents have either a legitimate right to use the Domain Names or have used the Domain Names through a previous course of conduct pre-dating the registration by the Complainants of the marks. In the absence of such evidence, the panel is unable to find any legitimate right or interest as required in paragraph 4(a)(ii) of the Policy which the Respondents may claim.

The panel, therefore, determines that the Respondents have no right or legitimate interest in the Domain Names.

Domain Names Registered and used in Bad Faith

There is evidence submitted by the Complainants that demonstrates bad faith by the Respondents. The panel notes that the Domain Names were registered sometime after the registration of the earliest trademark by the Complainants. Further, the panel notes the evidence of an employee solicitor representing the Complainants which indicates that the Respondents were aware of the Complainants' rights with respect to the ACCOUNTEMPS trademark but nevertheless proceeded to register the Domain Names in the erroneous belief that the Complainants had abandoned their rights with respect to the trademark.

The panel finds that the Respondents have engaged in bad faith when by their own admission they were aware of the Complainants' rights with respect to the trademark and on the basis of a false assumption proceeded to register domain names largely identical to that of the Complainants' marks. In this regard the panel follows the earlier panel decision in Kimberley-Clarke Corp. v. Rossi. The Respondents' alleged belief that the Complainants had ceased to use the mark is difficult to accept.

There is evidence before the panel that the Respondents have obtained commercial benefit form registration of the Domain Names. The panel finds that consumers are likely to associate the Domain Names with the Complainants because the Domain Names and the Complainants' mark are largely identical. The Respondents have not submitted any evidence to the contrary.

 

7. Decision

The panel decides that the Domain Names should be transferred to the Complainants on the basis of the above findings.

 


 

Professor Michael Charles Pryles
Sole Panelist

Dated: May 29, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0261.html

 

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