Cloudstaff Holdings Pty Ltd v Comey Dixon, cloudstaff

WIPO Case No. D2025-1421

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cloudstaff Holdings Pty Ltd v. Comey Dixon, cloudstaff

Case No. D2025-1421

1. The Parties

The Complainant is Cloudstaff Holdings Pty Ltd, Australia, represented by Gowling WLG (Canada) LLP,

Canada.

The Respondent is Comey Dixon, cloudstaff, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <cloudstaff.online> (the “Disputed Domain Name”) is registered with Tucows

Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2025. On April 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 8, 2025, 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 (Contact Privacy Inc. Customer 0173722119) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2025, 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 amendment to the Complaint on April 14, 2025.

The Center verified that the Complaint together with the amendment to the 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 April 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2025.

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The Center appointed Michael D. Cover as the sole panelist in this matter on May 12, 2025. 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.

4. Factual Background

The Complainant was founded in 2005 and is an outsourcing company. The Complainant connects businesses with top talent from a network of 700,000 professionals. The Complainant has operations which span the Philippines, India, the USA, and Colombia and has clients across Australia, USA, and United Kingdom (“UK”).

The Complainant operates a website at “ Since 2021, the Complainant has generated millions of dollars in revenue.

The Complainant is the proprietor of the following registered trademarks:

Australia No. 2084722 CLOUDSTAFFING dated April 29, 2020, in Classes 35 and 42;

Australia No. 2198913 CLOUDSTAFF dated July 30, 2021, in Classes 35 and 42; and

UK No. 3807165 CLOUDSTAFF (& design) dated October 7, 2022, in Class 35.

The Complainant is also the proprietor of CLOUDSTAFF registered trademarks in India, the Philippines,

Singapore, and the USA.

The Disputed Domain Name was registered on January 6, 2025. The website to which the Disputed Domain

Name resolved was inactive at the time of filing of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Identical or Confusingly Similar

Notably, the Complainant contends that it is the registered owner of the CLOUDSTAFF trademarks and that, by virtue of these registrations, the Complainant has rights in the CLOUDSTAFF trademarks and continues to have such rights.

The Complainant also submits that the Disputed Domain Name is identical to the CLOUDSTAFF trademark and that, furthermore, the whole of the CLOUDSTAFF element of the CLOUDSTAFF trademarks is incorporated in the Disputed Domain Name. The Complainant also submits that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name. The Complainant contends that it is a well-established principle that the addition of a Top-Level Domain and the elimination of spaces are without legal significance in determining the issue of similarity.

The Complainant respectfully concludes that the Disputed Domain Name is confusingly similar to the
CLOUDSTAFF trademarks, in which the Complainant has rights.

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Rights or Legitimate Interests

The Complainant states that it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a disputed domain name that contains or is confusingly similar to a complainant’s mark. The Complainant continues that use which intentionally trades on the notoriety of another cannot constitute a bona fide offering of goods or services and that there is no evidence that the Respondent has ever used or demonstrated preparations to use the Disputed Domain Name or a name corresponding to the same in connection with a bona fide offering of goods or services.

The Complainant notes that there has never been any relationship between the Complainant and the or use the CLOUDSTAFF trademarks in any manner whatsoever, including in or as part of a domain name. The Registrant has used the Complainant’s office address in the USA as its physical address when registering the Disputed Domain Name.

The Complainant notes there is no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is making or intends to make a legitimate noncommercial use of the Disputed Domain Name.

The Complainant concludes that the Complainant has established a prime facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and submits that the Respondent does not have a legitimate interest or right in the Disputed Domain Name and is therefore removed from the application of paragraph 4(c) of the Policy.

Registered and Used in Bad Faith

The Complainant notes that, as per paragraph 4(b)(iv) of the Policy, bad faith registration will be found where sponsorship, affiliation or endorsement. The Complainant also notes that it is a well-established principle that it is not necessary for a disputed domain name to be associated with an active website for a finding of bad faith under paragraph 4(b)(iv) of the Policy and that previous panels have held that this bad faith requirement is met by a disputed domain name that, if ever put to use, would ultimately result in consumer confusion.

a respondent is using a disputed domain name to intentionally attempt to attract, for commercial gain,

The Complainant goes on to submit that, as the Disputed Domain Name is identical to the Complainant’s CLOUDSTAFF trademark, the Disputed Domain Name, if ever put to use, would likely confuse potential consumers into believing that the Respondent is somehow affiliated with or endorsed by the Complainant. The Complainant also submits that the Disputed Domain Name, if ever put to use, would result in Internet traffic being diverted from the Complainant to the Respondent, thereby putting the Respondent in a position to benefit financially.

The Complainant submits that the Respondent had actual or constructive knowledge of the Complainant’s rights, in view of the existence of the Complainant’s CLOUDSTAFF registered trademarks.

The Complainant submits the factual matrix clearly demonstrates that the Disputed Domain Name was registered and is being used in bad faith and that the Respondent has no entitlement whatsoever to the Disputed Domain Name.

In conclusion, the Complainant notes that the Disputed Domain Name is confusingly similar to the Complainant’s CLOUDSTAFF trademarks, in which the Complainant has rights, the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent has used the Disputed Domain Name to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the CLOUDSTAFF trademarks as to source, sponsorship, affiliation or endorsement.

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The Complainant requests that the Panel issue a Decision that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical
or confusingly similar to a trademark or service mark in which the Complainant has rights; that the
Respondent has no rights or legitimate interests in the Disputed Domain Name; and that the Disputed

Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of its CLOUDSTAFF and CLOUDSTAFFING trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the CLOUDSTAFF mark is reproduced within the Disputed Domain Name, and the
CLOUDSTAFFING mark is recognizable in the Disputed Domain Name. Accordingly, the Disputed Domain
Name is confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

It is also well established in prior UDRP decisions that the applicable generic Top-Level Domain (“gTLD”), in this case “online”, is a standard registration requirement and is to be ignored in considering confusing similarity.

The Panel finds the first element of the Policy has been established, in that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademarks CLOUDSTAFF and CLOUDSTAFFING, in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, Panels have recognized that proving a respondent lacks rights or legitimate interests in a disputed domain name may result in the difficult 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 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such
relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

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demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the
Policy or otherwise.

The Respondent has not demonstrated, before notice of the dispute, use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

The Panel further notes that the Respondent has used the Complainant’s company name as part of its
name, and the Complainant’s company address in the USA as its own physical address when registering the

Disputed Domain Name, which shows the Respondent’s intention to impersonate the Complainant.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has attempted to impersonate the Complainant by
including the Complainant’s company name, the company address in the USA and the Complainant’s
CLOUDSTAFF trademark when registering the Disputed Domain Name. There is no doubt that the
Respondent was aware of the Complainant and targeted the Complainant at the time of registration of the
Disputed Domain Name.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a disputed domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In particular, previous Panels have found that the non-use of a disputed domain name, which is also the
case here, would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview
3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of
the Complainant’s CLOUDSTAFF trademark, the composition of the Disputed Domain Name, and the
Respondent’s intention of impersonation of the Complainant, and finds that, in the circumstances of this
case, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the

Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 <cloudstaff.online> be transferred to the Complainant.

/Michael D. Cover/
Michael D. Cover
Sole Panelist
Date: May 26, 2025