Robert Half Incorporated; Robert Half International Inc. v. Accountancy Software Consultancy Ltd.; Frank J. McNamara

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert Half International Inc. and Robert Half Inc.

v.

Frank J McNamara and Accountancy Software Consultancy Limited

Case No. D2002-0261

1. The Parties

The Complainants are Robert Half Incorporated and Robert Half International

Incorporated. Their addresses are 2884 Sand Hill Road, Suite 200 Menlo Park,

California, 94025, United States of America. The Complainants are represented

by Robert S Weisbein and Todd Martin of Darby & Darby PC whose address

is 805 Third Avenue, New York 10022, United States of America.

The Respondents are Frank J McNamara and Accountancy Software Consultancy

Limited. The address of the Respondents is 31 Jestyn Close, Cardiff, South

Glam, CF5 4UR, United Kingdom. The Respondents have no authorized representative

for this proceeding.

2. The Domain Names and Registrar

The domain names in dispute ('Domain Names') are:

<accountemps.info>

<accountemps.biz>

The Domain Names were first registered on October 4, 2001, <accountemps.info>

and November 10, 2001 <accountemps.biz>.

The Registrar with which the Domain Names are registered is Easy Space

Limited, 2 Park Court, Pyrford Road, West Byfleet, Surrey, KT14 6SD, United

Kingdom.

3. Procedural History

The Complaint was filed in electronic format on March 18, 2002,

and hard copies were filed on March 20, 2002. On March 19, 2002,

the Center transmitted acknowledgment of receipt of complaint. On March 26, 2002,

the Center transmitted a request for registrar verification to Easy Space

Limited, in connection with this case. On March 28, 2002, Easy

Space Limited sent via e-mail to the Center a verification response confirming

that the Respondent is the registrant.

On April 5, 2002, the Center requested an amendment of paragraph 8 of the

Complaint. The Complaint, as originally filed, referred to the Court of

Virginia despite the location of the registrar, Easy Space Ltd, being the

United Kingdom.

The Rules for Uniform Domain Name Dispute Resolution Policy (the 'Rules')

provide that the Complainant specify at least one appropriate Mutual Jurisdiction

(Rules, para 3(b)(xiii)). The Rules state that court jurisdiction at the

location of the principal office of the Registrar may be elected as a court

of Mutual Jurisdiction, 'provided the domain name holder has submitted in

its registration agreement to that jurisdiction for court adjudication of

disputes concerning or arising from the use of the domain name', when there

is no such submission, the only possible court of Mutual Jurisdiction is

that at the location of the domain name holder's address and the Complainant

may not submit to the jurisdiction in the location of the principal office

of the Registrar.

In this case, the principal office of the Registrar and the location of

the domain name holder's address are the United Kingdom. Accordingly, the

Complainant filed an amendment to the Complaint specifying the United Kingdom

as the venue for Mutual Jurisdiction.

On April 15, 2002, the Center verified the Complaint satisfied the requirements

of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"),

the Rules and the Center’s Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy ("the Supplemental Rules").

On April 15, 2002, the Center formally commenced this proceeding and sought

to notify the Respondent that its response would be due by May 5, 2002.

The Center notified the Respondent of default on May 7, 2002.

On May 16, 2002, the WIPO Arbitration and Mediation Center notified the

parties that an Administrative Panel had been appointed consisting of a

single member: Professor Michael Charles Pryles, who had submitted a Statement

of Acceptance and Declaration of Impartiality and Independence.

4. Factual Background

A. The Complainant

The Complainants are the owners of a number of registered trademarks for

the mark "ACCOUNTEMPS". The mark is registered in the following

jurisdictions: Austria, Benelux, Brazil, Canada, Czech Republic, Denmark,

European Union, Finland, France, Germany, Hong Kong, Ireland, Israel, Italy,

Japan, Mexico, Monaco, New Zealand, Norway, Poland, Portugal, Puerto Rico,

Singapore, Slovak Republic, South Africa, South Korea, Spain, Sweden, Taiwan,

Thailand, United Kingdom and United States. In addition, the Complainants

have either registered or have pending applications for the registration

of the following marks: ACCOUNTEMPS AND DESIGN, ACCOUNTEMPS (block letters),

ACCOUNTEMPS (State of Virginia), ACCOUNTEMPS in Katakana, ACCOUNTEMPS specialised

financial staffing and design and accountemps stylised.

Accountemps is a business division of the Complainants. The Complainants

have been in the business of providing employment services to companies

for over 50 years and have a presence in more than 330 offices world wide.

Accountemps, a division of the Complainants, is the worlds largest specialised

temporary staffing service for accounting, finance and book keeping professionals.

The Complainants state that for the period 2000/2001 total United States

revenues for services rendered under the ACCOUNTEMPS mark were approximately

$US2 billion. The Complainants registered ACCOUNTEMPS as a trademark as

early as 1984 (United States trademark registration number 1,272,104).

Further, the Complainants state they have owned the internet domain name

<accountemps.com> since November 6, 1995. This domain name

leads users to the home page of Accountemps, which provides information

about the services offered by the Complainants. The Complainants state that

the Accountemps home page is an important element of its corporate communications

and business strategy.

In addition, the Complainants state that they have owned and operated the

<accountemps.co.uk> domain name since May 1997.

The Complainants submit that they have spent 'millions of pounds' in marketing

the mark ACCOUNTEMPS worldwide. They identify a number of country based

publications which have featured advertisements incorporating the ACCOUNTEMPS

mark. The Complainants assert that the Respondents are in the business of

providing software, consultancy and accounting services in direct competition

to their business.

B. The Respondent

According to NeuLevel Inc and Afilias Inc WhoIs databases, the Respondents

in this administrative proceeding are Frank J McNamara and Accounting Software

Consultancy Limited. The Respondents have not filed a response in this proceeding.

5. Parties’ Contentions

Domain Name and Registered Trade Mark Confusingly Similar (paragraph

4(a)(i) of the Policy)

It is submitted by the Complainants that the Domain Names and the registered

trademark are identical or confusingly similar.

The Complainants contend that their legal representative has been in communication

with the Respondents. It is asserted that in those communications the Respondents

acknowledged the Complainants rights with respect to the ACCOUNTEMPS mark.

It is further asserted that the Respondents erroneously believed that ACCOUNTEMPS

had been 're-branded' in the United Kingdom and was no longer in use. The

Complainants allege that the Respondents have implicitly conceded that the

Domain Names and the mark are identical by erroneously believing that mark

had been abandoned.

The Complainants contend that the Respondents have registered the Domain

Names wholly incorporating their registered mark. The Complainants further

assert that confusion between the Domain Names and the Complainants registered

marks and domain names will likely occur because of the similarities.

The Respondents have not filed their response.

Legitimate Interest or Right in the Domain Name (paragraph

4(a)(ii) of the Policy)

The Complainants have not directly dealt with this aspect of the Policy

but suffice to say there is no evidence of a licence granted by the Complainants

allowing the Respondent to use the registered mark. The Complainants submit

that Accounting Software Consultancy Limited (one of the Respondents) is

not a similar name to the Domain Names which would potentially have justified

the use by the Respondents of the Domain Names.

The Respondents have not filed a response.

Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)

The Complainants contend that the business of the Respondents which entails

the offer of services by Mr. McNamara as a temporary consultant to accounting

firms is likely to ultimately expand to employing account staff and supplying

temporary staff to businesses.

The Complainants rely on evidence from Lucy Patricia Kilshore, a solicitor

employee of CMS Cameron McKenna who act for the Complainants and who spoke

to Mr. McNamara. During their conversation Mr. McNamara conceded he was

aware of Accountemps and that it was a business division of the Complainants.

Mr. McNamara also stated he was under the 'erroneous' belief that Accountemps

had been 're-branded' to Robert Half and that the Accountemps name was no

longer in use. The Complainants submit that the arbitration panel decision

in Kimberly - Clark Corp. v. Rossi,WIPO Case No: D3000-1263 (December 4, 2000)

is persuasive authority for the following: where a respondent has

admitted knowledge of a complainant's trademark and chosen to register a

domain name incorporating that mark based on an erroneous belief that the

complainant had no intention of registering the domain name for its own

use, a panel will find that registration by the respondent had been done

in bad faith.

The Complainants submit that the Respondents 'constructively' knew that

the trademarks existed prior in time to the registration of the Domain Names.

The basis for this submission appears to relate to the close geographic

proximity of the Complainants' offices in Bristol, England to the Respondents'

business address in the United Kingdom. Further, the Complainants submit

that the Respondents seek to impute an association with the Complainants

registered mark and therefore 'poach [its] reputation and good will'.

The Respondents have not filed a response.

6. Discussion and Findings

General

Paragraph 4(a) of the Policy requires that the Complainant must prove each

of the following:

- The domain names are identical or confusingly similar to the

trade marks; and

- The Respondent has no right or legitimate interest in respect

of the domain names; and

- The domain names have been registered and are being used in

bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii)

referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances

that, if proved, constitute evidence of a right or legitimate interest as

described in paragraph 4(a)(ii) referred to above.

Domain Names Identical / Confusingly Similar

The Complainants' registered trademarks ACCOUNTEMPS and the Domain Names

<accountemps> are largely identical. The panel finds that the spelling

of the trademarks and the main part of the Domain Names are identical and

therefore are likely to confuse consumers who may reasonably assume that

the Domain Names are in some way associated with the Complainants. The additions

of 'biz' or 'info' are incidental and do not serve to significantly distinguish

the two.

No Right or Legitimate Interest

The Respondents have not filed a response in this proceeding. Therefore,

the panel has no information before it which would establish that the Respondents

have either a legitimate right to use the Domain Names or have used the

Domain Names through a previous course of conduct pre-dating the registration

by the Complainants of the marks. In the absence of such evidence, the panel

is unable to find any legitimate right or interest as required in paragraph

4(a)(ii) of the Policy which the Respondents may claim.

The panel, therefore, determines that the Respondents have no right or

legitimate interest in the Domain Names.

Domain Names Registered and used in Bad Faith

There is evidence submitted by the Complainants that demonstrates bad faith

by the Respondents. The panel notes that the Domain Names were registered

sometime after the registration of the earliest trademark by the Complainants.

Further, the panel notes the evidence of an employee solicitor representing

the Complainants which indicates that the Respondents were aware of the

Complainants' rights with respect to the ACCOUNTEMPS

trademark but nevertheless proceeded to register the Domain Names in the

erroneous belief that the Complainants had abandoned their rights with respect

to the trademark.

The panel finds that the Respondents have engaged in bad faith when by

their own admission they were aware of the Complainants' rights with respect

to the trademark and on the basis of a false assumption proceeded to register

domain names largely identical to that of the Complainants' marks. In this

regard the panel follows the earlier panel decision in Kimberley-Clarke

Corp. v. Rossi. The Respondents' alleged belief that the Complainants

had ceased to use the mark is difficult to accept.

There is evidence before the panel that the Respondents have obtained commercial

benefit form registration of the Domain Names. The panel finds that consumers

are likely to associate the Domain Names with the Complainants because the

Domain Names and the Complainants' mark are largely identical. The Respondents

have not submitted any evidence to the contrary.

7. Decision

The panel decides that the Domain Names should be transferred to the Complainants

on the basis of the above findings.

Professor Michael Charles Pryles

Sole Panelist

Dated: May 29, 2002