PrideStaff, Inc. v Corp, New Ventures Services

WIPO Case No. D2023-3789

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

PrideStaff, Inc. v. Corp, New Ventures Services

Case No. D2023-3789

1. The Parties

Complainant is PrideStaff, Inc., United States of America, represented by Frost Brown Todd LLC, United

States of America.

Respondent is Corp, New Ventures Services, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pridestaffusa.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2023. On September 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2023, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2023.

The Center appointed Timothy D. Casey as the sole panelist in this matter on October 20, 2023. 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.

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4. Factual Background

Complainant is a staffing services firm found in 1978, with over 85 offices throughout the United States of

America.

Complainant has a registration for PRIDESTAFF as a trademark, with a date of first use of March 1, 1995

(the “PRIDESTAFF Mark”), as follows:

Mark	Jurisdiction	Class(es)	Registration No.	Registration Date
PRIDESTAFF	United States of	35	2116589	November 25, 1997
America

The disputed domain name was registered on June 12, 2023. At the time of filing the Complaint, the disputed domain name resolved to a website with pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Complainant contends it has rights in the PRIDESTAFF Mark, that the disputed domain name is confusingly similar to the PRIDESTAFF Mark because it incorporates the PRIDESTAFF Mark in its entirety, and that the term “usa” and the Top-Level Domain are inconsequential to a confusing similarity determination.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent is neither a franchisee nor otherwise affiliated with Complainant, and that Respondent is using the disputed domain name for illegitimate purposes that do not equate to a bona fide offering of

services in connection with the disputed domain name.

Complainant contends that Respondent is passively holding the disputed domain name, using it as a placeholder with PPC links directing customers to third party sites offering competitive services to those of Complainant. Complainant further contends that Respondent’s passive holding of the disputed domain name prevents Complainant from obtaining its rightful ownership and control of the same, that Respondent registered the disputed domain name to capitalize on the goodwill associated with the PRIDESTAFF Mark, and that by so doing Respondent deceives Internet users seeking information from Complainant about its PRIDESTAFF Mark branded services.

Complainant notes that Respondent has set up MX-records for the disputed domain name, which is an indicator that Respondent may use email sent and received from the disputed domain name for fraudulent purposes. Complainant contends that this fact, coupled with Respondent’s lack of an established and bona fide business associated with the nature of the disputed domain name creates an inference that the disputed domain name was set up to engage in some type of illegal behavior. Complainant further points to bioMérieux v. Registration Private, Domains By Proxy, LLC / Milton Bardmess, WIPO Case No. D2020-3499, which held that the establishment of MX-records for a disputed domain name constitutes a use of the disputed domain name in a manner that establishes that Respondent has engaged in behavior that would falsely imply an affiliation with Complainant and thereby constitutes bad faith.

Complainant contends that Respondent is a serial cybersquatter, noting at least 17 negative UDRP decisions against Respondent since 2015.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant’s use of the PRIDESTAFF Mark for more than 25 years and registration of the same are more than sufficient to establish that Complainant has trademark rights in the PRIDESTAFF Mark.

Complainant contends that the disputed domain name is confusingly similar to the PRIDESTAFF Mark.

Given that Complainant’s PRIDESTAFF Mark is recognizable in the disputed domain name, the Panel agrees and finds that the disputed domain name is confusingly similar to the PRIDESTAFF Mark.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no legitimate interest in the disputed domain name. Respondent is not affiliated with Complainant. Respondent’s use of the disputed domain name does not equate to a bona fide offering of services in connection with the disputed domain name. In particular, Respondent’s use of the disputed domain name to host a parked page comprising PPC links to competing third party sites is not a bona fide offering of goods or services that would give rise to rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name, comprising the PRIDESTAFF Mark and adding a geographical term associated with Complainant’s business, carries a risk of implied affiliation with Complainant as it effectively impersonates or suggests sponsorship or endorsement by Complainant, and accordingly cannot constitute a fair use in these circumstances. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of the geographical term in the disputed domain name only serves to further increase the level of falsely suggested sponsorship or endorsement by Complainant.

Respondent has not rebutted Complainant’s prima facie case and has provided no arguments or evidence showing potential rights or legitimate interests in the disputed domain name. For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given i) the timing of Complainant’s first use and registration of the PRIDESTAFF Mark, predating
registration of the disputed domain name by more than 25 years, ii) Respondent’s use of the disputed
domain name to host a parked page with PPC links, along with the configuration of MX-records, and iii) the
inherently misleading nature of the disputed domain name as a combination of the PRIDESTAFF Mark with a
geographical term, Respondent had clear knowledge of the PRIDESTAFF Mark and Complainant’s business

prior to registration.

The Panel finds that Respondent’s registration of the disputed domain name was in bad faith. In addition, supports its bad faith.

In addition, the Panel finds Respondent’s usage of the disputed domain name to attract consumers to a website associated with the disputed domain name by falsely associating the website with Complainant constitutes use in bad faith consistent with paragraph 4(b)(iv) of the Policy.

The Panel concludes that the disputed domain name was registered and has been used in bad faith.

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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 <pridestaffusa.com> be transferred to Complainant.

/Timothy D. Casey/
Timothy D. Casey
Sole Panelist
Date: November 3, 2023