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Workforce.com #UDRP should have been a case of Reverse #Domain Name Hijacking

Catched.com

The UDRP filed against the aged, generic domain Workforce.com is one for the proverbial books.

The domain was registered in 1994, according to DomainTools, and its registrant acquired Mediatec Publishing, Inc d.b.a Human Capital Media, that used the domain Workforce.com for its print publication “Workforce” from 1994 until 2019.

The Complainant in this UDRP is WorkForce Software LLC, operating from WorkforceSofware.com. They are alleging rights to the WORKFORCE SOFTWARE mark, and a common law mark to WORKFORCE. The Respondent disputes the validity of these marks due to their generic nature, and has filed a petition at the USPTO seeking their cancellation.

A three member panel at the National Arbitration Forum delivered a decision against the transfer of the domain. The panel found that the domain Workforce.com has been registered and used in good faith, with services being rendered under that brand.

It’s baffling how they did not deliver a finding of Reverse Domain Name Hijacking, given the circumstances of the domain’s fair use and the age of its registration (26 years.)

Full details follow:

The domain transfer was denied.

WorkForce Software, LLC v. Samuel Dietzmann / Human Capital Media

Claim Number: FA2003001888120

PARTIES

Complainant is WorkForce Software, LLC (“Complainant”), represented by Daniel H. Bliss of HOWARD & HOWARD ATTORNEYS PLLC, Michigan, United States. Respondent is Samuel Dietzmann / Human Capital Media (“Respondent”), represented by Verity Stone of Hopgood Ganim, International.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <workforce.com>, registered with Network Solutions, LLC.

PANEL

The undersigned each certify that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Katalin Szamosi has been appointed as the Chair of the three-member panel along with Steven M. Levy, Esq. and Paul M. DeCicco as co-panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 12, 2020.

On March 17, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <workforce.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@workforce.com. Also on March 19, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on May 4, 2020.

Additional Submissions from both the Complainant and the Respondent were received.

On May 11, 2020, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Katalin Szamosi as the Chair of the three-member panel along with Steven M. Levy, Esq. and Paul M. DeCicco as co-panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <workforce.com> domain name is identical to Complainant’s “WORKFORCE SOFTWARE” mark. In support of this Complainant asserts that

· it is the owner of various United States trademarks with respect to its services, including the federally registered trademark WORKFORCE SOFTWARE (U.S. Trademark Registration No. 4,608,651) for consulting services related to implementation of computer software and programs for others;

· it has rights in the WORKFORCE SOFTWARE mark through its trademark registrations;

· Respondent’s Domain is confusingly similar to the Complainant’s Marks because the Domain includes the term “WORKFORCE” a term from the Complainant’s WORKFORCE SOFTWARE trademark, before the generic top-level domain (gTLD) “.com”

· it has common law rights since 1999 in the mark WORKFORCE for computer software for timekeeping and workforce management;

· it owns the domain <workforcesoftware.com>, and has been using this domain since July 1999.

2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that

· Respondent is not authorized or permitted to use any part of Complainant’s WORKFORCE SOFTWARE mark;

· it has been using the mark WORKFORCE and WORKFORCE SOFTWARE for timekeeping and workforce management computer software and consulting services related to the implementation of computer software services since July 1999;

· some time around May 2019, Tasmin Trezise, co-owner of a company called EPI Capital Pty, Ltd. (a/k/a “Tanda”), acquired Chicago-based Human Capital Media, the parent company of a business-to-business printed publication named “Workforce”;

· Tanda then moved away from the brand “TANDA” and rebranded to “workforce.com” to offer their current and future services under a unified brand;

· its WORKFORCE SOFTWARE trademark was registered in September 2014, well before Respondent acquired the Domain in May 2019.

3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that

· it owns the domain <workforcesoftware.com>, and has been using this domain since July 1999, which is used for its website;

· Respondent knew or should have known that it registered the Domain in bad faith to capitalize on consumer recognition of Complainant’s trademarks and is using the website to which the Domain name resolves to offer similar goods and services to those of the Complainant;

· Respondent did not register the Domain to conduct legitimate business and/or is using the Domain to confuse internet traffic seeking the Complainant;

· Respondent is using the Domain to direct Complainant’s customers to a page impersonating the Complainant and is containing goods and services falsely designated with the Complainant’s Mark.

B. Respondent

1. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(i) that his <workforce.com> domain name is identical to Complainant’s Marks. In support of this Respondent asserts that:

· no common law trademark rights exist for WORKFORCE SOFTWARE as the terms “WORKFORCE” and “WORKFORCE SOFTWARE” are common and generic words, descriptive of a group of people engaged in or available for work;

· Complainant provided no evidence to substantiate that these common terms have been used substantially exclusively by Complainant for Complainant’s services or that these common law trademarks have otherwise attained a secondary meaning;

· it has filed a petition for cancellation of the Complainant’s Marks with the USPTO;

· none of the registered trademarks included in the Complainant’s Marks are limited to the word “WORKFORCE” alone, and each contains other, descriptive terms which serve to distinguish the Domain Name from the Complainant’s Marks such as “Software”, “WFS” and “Company”;

2. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(ii) that it should be considered as having no rights and legitimate interests in the disputed domain name and it contests Complainant’s assertions. In support of this Respondent asserts that:

· Complainant has failed to establish a prima facie case with respect to the Respondent’s alleged lack of rights or legitimate interests in the Domain Name;

· it was incorporated for the purpose of expanding and diversifying the operations of the Tanda business in the U.S to include publishing of multimedia content on the subject of human resources – a capability which Tanda proposed to acquire by purchase of the substantial assets of a company called Mediatec Publishing Ltd d.b.a Human Capital Media;

· Mediatec Publishing, Inc d.b.a Human Capital Media, the predecessor in title, used the Domain Name in connection with its business-to-business print publication “Workforce” from 1994 until the acquisition of the substantial assets by the Respondent in 2019;

· since the acquisition of the Workforce trademark and the Domain Name it has been using the Domain Name in connection with the bona fide offering of goods and services, namely its online and print publication, Workforce Magazine;

· Workforce Magazine has been in circulation since 1922;

· it delivers the content of its Workforce Magazine via physical print magazines and digital magazines and online newsletters.

3. Respondent argues against the Complainant’s contentions under Policy ¶ 4(a)(iii). In support of this Respondent asserts that:

· its registration of the Domain Name was undertaken in good faith in accordance with its acquisition of other assets relating to the WORKFORCE magazine title;

· Complainant was not a commercial or business competitor of the Respondent in the field of multimedia publishing therefore the finding on bad faith may be declined;

· it is well established that use of a domain name will not amount to bad faith under UDRP paragraph 4(b)(iv) where the domain name in question is generic.

C. Additional Submissions

In its Additional Submission Complainant asserts the following:

· the alleged Respondent, HCMA Inc d.b.a Human Capital Media, is not the appropriate respondent to the Complaint and not the owner of the Domain Name registration for <workforce.com>

· the real Respondent, EPI CAPITAL PTY LTD, purchased Human Capital Media, and uses the Domain Name to offer for sale the same goods and services that were previously offered under the TANDA marks on the Tanda website, e.g., computer software involving management and tracking of employee time and attendance;

· it does not object to the magazine publication “Workforce Magazine”, the Complainant does object to the use of “Workforce” as opposed to “TANDA” for their time and attendance software.

In its Additional Submission Respondent asserts the following:

· the Rules clearly state that “Respondent” means the holder of a domain-name registration against which a complaint is initiated.

· it has submitted evidence which shows HCMA, Inc, is the legal and beneficial holder of the Domain Name;

· Complainant acknowledged the bona fide provision and promotion of the Workforce Magazine via the Domain Name;

· regardless of whether provision of workforce software via the Domain Name equates to a bona fide right or legitimate interest in respect of the Domain Name, publication of the WORKFORCE magazine does demonstrate an indisputable legitimate interest in the Domain Name.

FINDINGS

The Panel finds that despite Respondent’s petition for cancellation of the Complainant’s trademark the Complainant has demonstrated current ownership of valid trademarks. The “future” validity of trademarks are outside of the scope of the UDRP policy therefore the Panel will make findings of fact for the reasons explained below.

DISCUSSION

Preliminary Issue: Identity of the Respondent

Complainant asserts that Respondent is not the real respondent-in-interest whereas Respondent offers evidence in support of his “real” Respondent status.

The definition of Respondent under the Rules sets out the following: “the holder of a domain-name registration against which a complaint is initiated” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” The Panel finds that unless there is some fraud involved such as identity theft or cyberflight, there is no issue regarding the identity of the real respondent-in-interest since the WHOIS record for <workforce.com> identifies Samuel Dietzmann / Human Capital Media as the Domain Name’s registrant.

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

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant asserts rights in the WORKFORCE SOFTWARE mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g. Reg. No. 4,608,651, registered September 23, 2014). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

Complainant also argues that Respondent’s <workforce.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates “workforce” from Complainant’s mark. Omitting a term from Complainant’s mark as well as adding a gTLD is not enough to avoid being confusingly similar to Complainant’s mark. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

Respondent contends that the <workforce.com> domain name is comprised of a common and generic term and the Complainant’s Marks contain additional generic terms which is sufficient to distinguish the Domain Name from the Complainant’s Marks. As such, it cannot be found to be confusingly similar to Complainant Marks. The Panel notes that Complainant’s Marks contain other terms such as “Software”, “WFS” and “Company”, however these terms are insufficient to distinguish the Domain Name from the Complainant Marks since the WORKFORCE core element of Complainant Marks is present in the domain name. The Panel notes that it does not need to make a determination under Policy ¶ 4(a)(i) as to whether or not the at-issue domain name is comprised of a common and generic as this portion of the Policy considers only whether Complainant has rights in a mark and whether the domain name is identical or confusingly similar to such mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

The Panel finds Complainant was able to make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name. To wit, Complainant shows that it has a registered trademark that that is confusingly similar to the <workforce.com> domain name and further asserts that it had not permitted or authorized Respondent to use such trademark.

Nevertheless, the Panel highlight’s that Respondent has shown that, prior to the dispute, Respondent used the <workforce.com> domain name in connection with a bona fide offering of goods and services thereby meeting all three criteria required under paragraph 4(c)(i) of the Policy. This Panel is of the view that the fact the domain name might have also been used for services outside of the scope of the trademarks of the Respondent which are identical to services of the Complainant does not negate the satisfaction of paragraph 4(c)(i).

Respondent claims that its print and online publication of “Workforce” magazine is a bona fide offering of goods or services under Policy ¶ 4(c)(i). Respondent supports its argument by providing screenshots to the resolving website which appears to display articles from such magazine. Furthermore, Complainant has accepted the arguments and evidence of the Respondent with respect to such magazine in its papers. The Panel thus agrees with Respondent that this amounts to a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Registration and Use in Bad Faith

The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii) as Respondent demonstrates that it has rights and/or legitimate interests in the at-issue domain name. Since Complainant must prove all three elements under the Policy, the Panel declines to analyze the third element.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <workforce.com> domain name REMAIN WITH Respondent.

Katalin Szamosi, Steven M. Levy, Esq. and Paul M. DeCicco

Dated: May 22, 2020


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