Adecco Group AG v Milen Radumilo
WIPO Case No. DCO2023-0041
•28-06-2023
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Adecco Group AG v. Milen Radumilo
Case No. DCO2023-0041
1. The Parties
The Complainant is Adecco Group AG, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <adecco.co> (the “Disputed Domain Name”) is registered with Communigal
Communications Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2023.
On April 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On May 4, 2023, the Registrar transmitted by email to the
Center its verification response, disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 5, 2023, 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 May 10, 2023.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2023.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 14, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
4. Factual Background
The Complainant is part of the Adecco Group, one of the world leaders in professional staffing and workforce solutions.
The Complainant is the owner of several trademarks, including (hereinafter “the ADECCO Trademarks”):
- the Swiss trademark ADECCO No. 2P-431224 registered on September 26, 1996, for products and
services in classes 35, 41 and 42;
| - | the Swiss trademark ADECCO No. P-549358 registered on August 18, 2006, for products and services in classes 9, 35, 36, 41 and 42; |
| - | the European Union Trade Mark ADECCO No. 003330149 registered on January 19, 2005, for products and services in classes 35, 41 and 42; |
| - | the international trademark ADECCO No. 666347 registered on October 17, 1996, for products and services in classes 35, 41 and 42; and |
| - | the international trademark ADECCO (figurative) No. 901755 registered on August 18, 2006, for products and services in classes 9, 35, 36, 41 and 42. |
The Complainant has also registered several domain names containing the ADECCO Trademarks, including
<adecco.com>.
The Disputed Domain Name was registered on June 19, 2022. The Complainant has provided evidence showing that at different points in time the disputed domain name resolved to a Firefox search page, a pay- per-click (“PPC”) landing page, and was subject to a dynamic redirection.
5. Parties’ Contentions
A. Complainant
First, the Complainant stands that the Disputed Domain Name is identical to its earlier ADECCO
Trademarks, since it incorporates, in its second-level portion, the ADECCO Trademark in its entirety.
Secondly, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, since it was registered many years after the first registration of the ADECCO Trademarks, which are widely known. The Complainant adds that it has not licensed or authorized the Respondent to register or use the Disputed Domain Name, and that the Respondent is not affiliated to the Complainant in any form. The Complainant asserts that there is no evidence that the Respondent is known by the Disputed Domain Name or owns any corresponding registered trademarks. The Complainant considers that the structure of the Disputed Domain Name - composed by the ADECCO Trademark in its entirety - reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant and its ADECCO Trademarks in Internet users’ mind.
Lastly, the Complainant considers that that the Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the ADECCO Trademarks are widely known in many countries and by conducting a simple online search, the Respondent would have inevitably learned about the Complainant. The Complainant adds that the structure of the Disputed Domain Name suggests that the Respondent had
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the Complainant’s trademark in mind and targeted it specifically. The Complainant also demonstrates that
the Disputed Domain Name is subject to a dynamic redirection and that a warning page may appear
indicating that the Disputed Domain Name redirects towards a malicious website. The Complainant points
out that it also sent a cease-and-desist letter to the Respondent to which the latter did not reply to. Finally,
the Complainant demonstrates that the Respondent was involved in the past in UDRP proceedings for
registering and using domain names incorporating third parties’ trademarks in bad faith, demonstrating that
the Respondent engaged in the bad faith conduct of registering other domain names incorporating third
parties’ trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the Disputed Domain Name, the Complainant shall prove the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark 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 in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the ADECCO
Trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark 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 recognizable within the domain name (see section 1.7 of
the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview
3.0”)).
Regarding the Disputed Domain Name, the Panel finds that it is composed of:
- The ADECCO Trademark in its entirety; and
- the country-code Top-Level Domain (“ccTLD”) “.co”, it being specified that the ccTLD in a domain name is
viewed as a standard registration requirement and as such is disregarded for the purpose of determining
whether a domain name is identical or confusingly similar to a trademark.
According to prior UDRP panel decisions, it is sufficient that the domain name incorporates the entirety of a trademark, in order to consider the domain name as confusingly similar to that mark for purposes of UDRP standing.
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Therefore, the Panel holds that the Disputed Domain Name <adecco.co> is identical to the ADECCO
Trademarks and that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name.
These circumstances are:
- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or
services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the
domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that a complainant shows prima facie that a respondent lacks rights or legitimate interests in a domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in a UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the
knowledge or control of the respondent. As such, where a complainant makes out prima facie that a
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 (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
| Respondent to use its ADECCO Trademarks. Moreover, the Panel finds that there is no evidence that the | Indeed, it appears that the Complainant has not granted any license or authorization of any kind to the page and a PPC landing page, including a link referring to the Complainant. |
| In any case, the Respondent did not reply to the Complainant’s contentions, and consequently, did not rebut the Complainant’s prima facie case. | |
| Therefore, according to the Policy, paragraphs 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name. |
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C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the Disputed Domain Name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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
the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
First, the Panel considers that it is established that the Complainant’s ADECCO Trademarks were registered and used before the registration of the Disputed Domain Name. Therefore, there is a presumption of bad faith registration of the Disputed Domain Name given that it wholly reproduces the ADECCO Trademarks.
Then the Panel points out that the Complainant demonstrates that:
- the Disputed Domain Name is subject to a dynamic redirection and that a warning page may appear
indicating that the Disputed Domain Name redirects towards malicious websites;
- the Disputed Domain Name resolved in the past to various webpages, including a PPC landing page on
which it hosted multiple hyperlinks to third-party websites, including a link referring to the Complainant; and
- the Respondent has engaged in a pattern of trademark-abusive domain name registration.
Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the Disputed Domain Name in bad faith according to the Policy, paragraphs 4(a)(iii).
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 Disputed Domain Name, <adecco.co>, be transferred to the Complainant.
/Christiane Féral-Schuhl/
Christiane Féral-Schuhl
Sole Panelist
Date: June 28, 2023
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