Decision for dispute CAC-UDRP-107446

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Complainant owns trademark registration in India for the ADECCO (wordmark), registration number 1312198, registered on September 30, 2004 for the following services:

Nice Class 35: ADVERTISING, BUSINESS MANAGEMENT AND BUSINESS ADMINISTRATION, OFFICE AND BUSINESS MANAGEMENT AND ADMINISTRATION IN CONNECTION WITH HUMAN RESOURCES, INCLUDING JOB ADVERTISING, RECRUITING, INTERVIEWING, ASSESSMENT, PERSONNEL MANAGEMENT AND PAYROLL SERVICES, EMPLOYMENT AGENCY SERVICES RELATING TO TEMPORARY AND PERMANENT PLACEMENT OF PERSONNEL, BUSINESS CONSULTING SERVICES, CONDUCTING SKILLS EVALUATION FOR INDIVIDUALS, CONSULTANCY RELATING TO PERSONNEL MANAGEMENT, SELECTION, RECRUITING AND TESTING, SERVICES AND EMPLOYMENT AGENCY SERVICES FOR TEMPORARY, SHORT-TERM AND PERMANENT PERSONNEL, PROVIDING QUALIFIED PERSONNEL ON A TEMPORARY AND CONTRACT BASIS, EXPERTS REPORTS IN THE FIELD OF PERSONNEL CONSULTANCY.

Nice Class 41: EDUCATION AND TRAINING, CONDUCTING TRAINING PROGRAMS FOR INDIVIDUALS INCLUDED IN CLASS 41.

NICE CLASS 42: EMPLOYMENT AND BEHAVIORAL TESTING, COMPUTER CONSULTING SERVICES INCLUDED IN CLASS 42.

Complainant is Adecco Group AG, a Swiss multinational that claims to be the world’s second largest human resources provider and temporary staffing firm. The services offered by the Complainant include temporary staffing, permanent job placement, career transition, and talent development in the office, industrial, technical, financial, and legal sectors, as well as business process outsourcing and consulting.  In India, the Complainant’s business operates through the Adecco (global website visible at https://www.adecco.com/). In India, Adecco claims to operate through 12 offices spread throughout the national territory, with in excess of 1400 employees.

Based on publicly available WHOIS information, the Respondent is identified as Adecco Staffing Solutions India. Based on the content of the website shown at the disputed domain name, this corresponds to a business described as a sole proprietorship vested in a Ranjith M., is described as an “exporter and service provider”, and is claimed to have been established in 1992. However, aside from this claim on the Respondent’s own website, the Complainant claims it is unable to find any indication of the Respondent’s use of the name dating to this time. The Respondent business claims to be active in providing services very similar to those of the Complainant, including manpower services, labor contractor services and the hiring of labor contractors.

The disputed domain name was first created November 26, 2024. According to the Complainant, it has not been used for other purposes than as the website of the Respondent’s purported business.

The Complainant points out that it has previously filed a UDRP dispute against the same Respondent, relating to the domain name <adeccostaffingsolutionsindia.com>. In that case (CAC-UDRP-106813), the Panel awarded the domain to the Complainant by a decision dated October 1, 2024. It appears that that the Respondent acquired the disputed domain subsequent to that decision in order to continue their business, already found by the prior Panel to have been conducted in bad faith.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy). The disputed domain name is indubitably similar to the Complainant's trademark as registered in India, where Respondent is purportedly located. The disputed domain name is a combination of the term “adecco” with the terms “staffing” and “solutions”. The two additional terms are generic terms clearly related to the services offered by the Complainant. The addition of generic terms does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark (see WIPO Overview 3.0 at Section 1.3). An internet user faced with the text of the disputed domain will likely assume that the domain is linked to the Complainant’s offering of staffing services.

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). While the disputed domain name appears to be owned by a business with a corresponding name, the legitimacy and scope of that business is unclear, at best. Even if the Respondent does operate a bona fide business, it cannot reasonably claim that this could have become the name by which the Respondent is commonly known when the only distinctive element of this domain ("Adecco") is the Complainant’s registered and internationally well-known trademark. The disputed domain was first registered on November 26, 2024, some 20 years after Complainant registered its mark in India, and shortly after the UDRP decision in case number CAC-UDRP-106813 finding that the Respondent had no legitimate rights or interests to their previous domain name <adeccostaffingsolutionsindia.com> and that domain name had been registered in bad faith.

While the disputed domain name is purportedly being used in connection with the offering of services, this does not qualify as a bona fide offering under the Policy. Respondents typically may demonstrate a bona fide offering only where its goods and services do not overlap with those for which the Complainant’s mark is used (see e.g. WIPO Case No D2001-1021 – <brucetrail.com>; WIPO Case No D2011-0312 – <maharajas-express.com>). This follows logically from the fundamental premise of the UDRP that the registration and use of a domain name will not be considered fair use where it falsely suggests affiliation with the trademark owner (see WIPO Overview 3.0 at 2.5). The Respondent uses the disputed domain name to promote their (apparent) business in the staffing and labor recruitment sectors, where the Complainant is established. The use of the disputed domain name in this context is likely to lead the public into thinking that the Respondent is somehow affiliated with the Complainant, which is not the case.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The disputed domain name was first registered in November 2024, twenty years after the Complainant’s trademark rights in the term Adecco were already firmly established in India. Further, the Respondent registered the disputed domain name immediately following a UDRP panel decision relating to <adeccostaffingsolutionsindia.com>, meaning the it is extremely unlikely that Respondent would have registered the disputed domain name without any knowledge of the Complainant’s prior rights.

Paragraph 4(b)(iv) of the Policy specifies that bad faith registration and use may notably be found where the domain in question has been used to attract users to a website through a likelihood of confusion and for the purposes of commercial gain. This is precisely the case here, as the disputed domain name is used for clearly commercial purpose in connection with a purported business in precisely the sector where the Complainant’s mark is registered and used.

Further, the Complainant submits that the Respondent's actions of registering, on two occasions, two domain names incorporating the Adecco mark constitutes a pattern of conduct preventing a trademark holder from reflecting its mark in a domain name. Prior panels deciding under the Policy have found such a pattern of conduct to be present with as few as two separate instances of abusive domain name registrations (see WIPO Overview 3.0 at 3.1.2). Here, the Respondent has previously registered a near identical domain name, used for the exact same abusive purposes as the domain name in dispute in the present case. Having been obliged to transfer the domain name <adeccostaffingsolutionsindia.com>, Respondent then proceeded to continue their abusive activities by registering and using the disputed domain name. The Complainant submits that these two registrations are a clear pattern of conduct aimed at profiteering from the internet user confusion resulting from the use of these abusive domains, and confirms the Respondent's bad faith registration and use. The Panel agrees.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name closely corresponds to Complainant's registered mark, and has been registered and used without any legitimate interest, and in bad faith -- despite a recent UDRP decision against the same Respondent, in relation to a highly similar domain name.