Protiviti Inc. v. Meng Dan Qian
Claim Number: FA2205001995382
Complainant is Protiviti Inc. (“Complainant”),[i] represented by Foley & Lardner LLP, New York, USA. Respondent is Meng Dan Qian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protviti.com> (the “disputed domain name”), registered with Cloud Yuqu LLC (the “Registrar”).
The undersigned certifies that 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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2022; the Forum received payment on May 6, 2022. The Complaint was received in English.
On May 9, 2022, the Registrar confirmed by e-mail to the Forum that the <protviti.com> disputed domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Cloud Yuqu 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 May 11, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 31, 2022 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@protviti.com. Also on May 11, 2022, the Chinese and English language 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Paragraph 11(a) of the Rules specifies that “the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Panel, then, has discretion to determine the language of the proceedings in light of the circumstances and facts of the particular proceeding. Specifically, “where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the language of the complaint, even if it is different from the language of the registration agreement, can be accepted.” See Country Mutual Insurance Company and Country Life Insurance Company v. Zhichao Yang, FA2112001976492 (Forum Jan. 20, 2022) (allowing the proceeding in English because the websites connected to the disputed domain names are in English which indicates that Respondent is familiar with English. In addition, it is the largest gTLD and is often used by international entities for international websites).
In the present case, although the Registrar’s registration agreement is in Chinese, Complainant asserts that Respondent is capable of understanding English as Respondent’s disputed domain name’s resolving website uses English characters and words, suggesting that Respondent is proficient in the English language. Further, the extra time and expense associated with proceeding in Chinese justifies proceeding in English, given that Complainant will bear the burden of spending extra time and money to obtain Chinese translations for the UDRP Complaint and supporting documents.
In sum, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, especially since Respondent received a Written Notice of Complaint in Chinese and yet failed to contact the Forum, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant operates as a global consulting firm that specializes in assisting companies with corporate governance initiatives and solutions for a broad range of business problems. Complainant claims that it has rights in the PROTIVITI trademark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,741,346, registered on July 29, 2003). Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s PROTIVITI Mark as it incorporates the mark in full except it omits the letter “i” between the “t” and “v”, along with the “.com” generic top level domain (“gTLD”).
Moreover, Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, Complainant has not authorized or licensed Respondent to use its PROTIVITI Mark in the disputed domain name, and Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, the disputed domain name resolves to a webpage that hosts pay-per-click hyperlinks related to Complainant’s business for commercial gain. Finally, Complainant claims that Respondent registered and is using the disputed domain name in bad faith since Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the PROTIVITI Mark based on its trademark registrations with the USPTO and other jurisdictions worldwide. The Panel contends that registration with the USPTO and other trademark agencies worldwide is sufficient to establish rights in its trademark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PROTIVITI Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name is confusingly similar to the PROTIVITI Mark as set forth below.
Here, the disputed domain name consists of a misspelling[ii] of the PROTIVITI Mark, deleting one letter – the letter “i” between the letters “t” and “v” in the PROTIVITI Mark, and then followed by the gTLD “.com“. Registration of a misspelled domain name does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). There is no doubt that Respondent chose the disputed domain name precisely because it is easily confused with Complainant’s PROTIVITI Mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the PROTIVITI Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its PROTIVITI Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
In particular, the Panel concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website presents users with pay-per-click links that list third party entities that purportedly offer services competing with those of Complainant. Using a disputed domain name to resolve to a page with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of the PROTIVITI Mark, which was used and registered by Complainant approximately 2 decades in advance of Respondent’s registration of the disputed domain name, renders it implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the PROTIVITI Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its PROTIVITI Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, the Panel concludes that Respondent registered and is using the disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Finally, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by deleting a letter from the disputed domain name to create a domain name that is easily confused with Complainant’s PROTIVITI Mark. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protviti.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 13, 2022
[i] As Protiviti Inc. is a wholly owned subsidiary of Robert Half International Inc., Complainant will hereinafter refer to the two aforementioned companies.
[ii] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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