Protiviti Inc. v. Scott Redfearn
Claim Number: FA1708001744465
Complainant is Protiviti Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is Scott Redfearn (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protiviticorp.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2017; the Forum received payment on August 15, 2017.
On August 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <protiviticorp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2017 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@protiviticorp.com. Also on August 18, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a highly respected expert in assisting organizations with corporate governance initiatives by providing independent audit and business/technology consultation services.
Complainant has registered its PROTIVITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,741,346, registered July 29, 2003) and elsewhere worldwide.
Respondent’s <protiviticorp.com> is confusingly similar to Complainant’s PROTIVITI mark because it incorporates the mark in its entirety, eliminates spaces, adds the generic term “corp,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <protiviticorp.com>. WHOIS information identifies Respondent as a member of Complainant’s management team, but this individual did not register or use the disputed domain. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <protiviticorp.com> is an inactive and inaccessible website. Respondent also uses email addresses that incorporate the disputed domain name in a phishing scheme to obtain personal information from users trying to apply for jobs with Complainant.
Respondent registered and used <protiviticorp.com> in bad faith. Respondent registered a false WHOIS to appear to be affiliated with Complainant’s business. Respondent registered <protiviticorp.com> with actual knowledge of Complainant and its rights to the PROTIVITI mark. Respondent failed to make active use of the disputed domain other than creating email accounts that incorporate the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations and other registrations worldwide, for its PROTIVITI mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the PROTIVITI mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses email originating from the at-issue domain name to impersonate Complainant in support of a phishing scheme to extract highly personal information from third parties.
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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the PROTIVITI mark with the USPTO, as well as its other registrations worldwide, establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <protiviticorp.com> domain name contains Complainant’s PROTIVITI mark in its entirety with the generic term “corp” added thereto. The top level domain name, “.com,” is appended to the “protiviticorp” string to complete the domain name. The differences between Respondent’s domain name and Complainant’s trademark fail to differentiate one from the other for the purpose of the Policy. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s STEELCASE mark pursuant to Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Scott Redfearn.” However, Complainant shows via declaration that Scott Redfearn, an employee of Complainant, did not register the domain name. The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Cargill, Inc. v. Domain Privacy Group, FA1305001501652 (Forum July 5, 2013) (stating that respondent could not acquire any rights to the disputed domain name when the WHOIS information provided a fictitious name designed to impersonate complainant’s inactive subsidiary entity); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the domain name to support email addresses originating from the <protiviticorp.com>domain name. By sending email which appears to be from a domain name sponsored by Complainant and incorporating the names of real employees of Complainant into the sender’s address, Respondent can only intend to perpetrate a fraud upon the recipient of the bogus email. More specifically, Respondent impersonates Complainant so that it might obtain highly personal information from duped third parties via returned job applications, and perhaps other questioning material, originating from Respondent. Consistent with its ruse, Respondent displays the PROTIVITI trademark and logo on its phony letters and emails. 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 of the domain name under Policy ¶ 4(c)(iii). See Monster Energy Co. v. Argo Wibowo, FA 1452773 (Forum Aug. 23, 2012) (“use of the disputed domain name for a fraudulent purpose, while posing as Complainant, is evidence that Respondent lacks right and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and interests, Respondent’s confusingly similar domain name was registered and used to help facilitate a scheme whereby Respondent , inter alia, sends email from the <protiviticorp.com>domain with job offers/applications for Complainant’s organization. Via the sham applications and perhaps otherwise Respondent solicits personal information from the applicant. Thereby Respondent perpetuates a phishing scheme which perpetrates identity theft or in other ways improperly benefits Respondent. Respondent’s use of the <protiviticorp.com> domain name to steal personal data by false pretenses is disruptive to Complainant’s business and demonstrates bad faith per Policy ¶ 4(b)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a fraudulent scheme is evidence of bad faith registration and use); see also, Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii)…). Respondent’s antics regarding the confusingly similar <protiviticorp.com> domain name also demonstrate bad faith under Policy ¶ 4(b)(iv). See Chevron Intellectual Prop. v. Webber, FA 1602001661076 (Forum Mar. 15, 2016) (“Respondent has created an email address for purposes of emailing potential job applicants attempting to solicit information as Complainant’s subsidiary. This constitutes bad faith use under Policy ¶ 4(b)(iv).”).
Finally, given Respondent’s overt use of the domain name to impersonate Complainant, there can be no doubt that Respondent was well aware of Complainant’s PROTIVITI mark when it registered the confusingly similar <protiviticorp.com> domain name. Registering a domain name with knowledge of another’s rights therein indicates bad faith under Policy ¶4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protiviticorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 14, 2017
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