Robert Half Inc. v Kai Aura

WIPO Case No. DAC2024-0001

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Robert Half Inc. v. Kai Aura

Case No. DAC2024-0001

1. The Parties

The Complainant is Robert Half Inc., United States of America (“United States”), represented by Foley &

Lardner LLP, United States.

The Respondent is Kai Aura, Mexico.

2. The Domain Name and Registrar

The disputed domain name <roberthalf.ac> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2024. On February 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2024, 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 February 27, 2024, 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 March 2, 2024.

The Center verified that the Complaint together with the amended Complaint, satisfied the formal
requirements of the .AC Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .AC Domain
Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .AC 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 March 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2024. The Respondent did not file a Response and the Center notified the Respondent’s default to the parties on April 2, 2024.

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The Center appointed Luca Barbero as the sole panelist in this matter on April 5, 2024. 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 is a specialized employment staffing agency founded in the United States in 1948.

With more than 400 consulting and staffing locations and over 10,000 employees worldwide, the Complainant focuses on providing its clients with skilled professionals in the fields of accounting and finance, technology, legal, creative, marketing, and administration and has received over time numerous prestigious awards, partly as a result of, its services marketed and rendered under the ROBERT HALF mark.

The Complainant has provided evidence of ownership, amongst others, of the United States trademark
registration No. 1156612 for ROBERT HALF (word mark), filed on June 12, 1979, and registered on June 2,

1981, in international class 35.

The Complainant is also the owner of the domain name <roberthalf.com>, which was registered November

6, 1995, and is used by the Complainant to promote its professional staffing and consulting services.

The disputed domain name <roberthalf.ac> was registered on July 20, 2023, and redirects to the

Complainant’s official website “

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the trademark ROBERT HALF in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the country-code Top Level Domain (“ccTLD”) “.ac”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent i) is not commonly known by the disputed domain name; ii) is in no way associated with, licensed by or affiliated with the Complainant; and, iii) is not otherwise authorized to use or register the ROBERT HALF mark in any manner.

The Complainant also submits that the Respondent’s use of the disputed domain name to redirect users to the Complainant’s website amounts to an attempt to divert and mislead consumers searching for the Complainant’s services and to tarnish Complainant’s mark and goodwill and reputation associated herewith, concluding that the Respondent’s use does not amount to a bona fide use or a legitimate noncommercial or fair use.

The Complainant also states that the Respondent is likely involved in a phishing scheme based on the configuration of email services for the disputed domain name, an inference which would be supported by the fact that the disputed domain name was registered with a privacy shield service.

As to the bad faith requirement, the Complainant contends that, by registering a domain name identical to the ROBERT HALF mark and redirecting it to the Complainant’s website, the Respondent attempted to pass off as the Complainant and clearly intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

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The Complainant also points out that the evidence and the totality of the circumstances surrounding the registration and use of the disputed domain name undoubtedly demonstrates that the Respondent had actual knowledge of the Complainant and its registered and well-known ROBERT HALF mark before registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

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

(i)        that the disputed domain name registered by the Respondent is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered or is being used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Resolution Policy (“UDRP”), the
Panel finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

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 a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Indeed, the Complainant has provided evidence of ownership of a valid trademark registration for ROBERT HALF in the United States (Annex 1, Exhibit 3 to the Complaint).

The entirety of the mark is reproduced within the disputed domain name without any alteration. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

In addition, the ccTLD “.ac” can be disregarded under the first element confusing similarity test, being a standard registration requirement. WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds the first element of the Policy has been established.

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.

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Although the overall burden of proof is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a 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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks or to register the disputed domain name.

Moreover, there is no evidence from which the Panel could infer the Respondent’s rights or legitimate interests over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel notes that the disputed domain name redirects to the Complainant’s official website “ and finds that such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Furthermore, the disputed domain name, being identical to the Complainant’s prior trademark ROBERT complainant’s trademark carry a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.

Therefore, the Panel finds the second element of the Policy has been established.

C. Registered or 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 finds that in light of i) the prior registration and use of the trademark ROBERT HALF by the Complainant; ii) the well-known character of the trademark ROBERT HALF in its sector; iii) the identity of the disputed domain name with the ROBERT HALF mark and iv) overall the fact that the

Respondent redirected the disputed domain name to the Complainant’s website, the Respondent was clearly aware of the Complainant at the time of registering the disputed domain name, and registered the disputed domain name with the intention to target the Complainant and its trademark.

The Panel also finds that the use of the disputed domain name by the Respondent, who has no connection
with the Complainant according to the records, to redirect users to the Complainant’s website

“ supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.

Indeed, Panels have consistently found that the mere registration of a domain name that is identical to a
famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Panels have moreover found that the lack of a respondent’s own rights to or legitimate interests in a domain

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name, redirecting the domain name to the complainant’s website, and absence of any conceivable good faith
use are all circumstance supporting a finding that a respondent registered a domain name to attract, for
commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood
of confusion with the complainant’s mark. Moreover, the Respondent retains control over the redirection of
the disputed domain name and is thus creating an implied ongoing threat to the Complainant. WIPO
Overview 3.0, section 3.1.4 of the Policy.

In view of the above and since the Respondent has failed to file a Response and submit counter-allegations to rebut the Complainant’s contentions, the Panel finds that the Respondent’s registration and use of the disputed domain name amounts to bad faith.

Therefore, 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 <roberthalf.ac> be transferred to the Complainant.

/Luca Barbero/
Luca Barbero
Sole Panelist
Date: April 19, 2024