Protiviti Inc. v. Namecheap
Claim Number: FA1810001810654
Complainant is Protiviti Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, Illinois, USA. Respondent is Namecheap (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protivitil.com>, registered with NameCheap, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2018; the Forum received payment on October 9, 2018.
On October 8, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <protivitil.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2018 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@Protivitil.com. Also on October 12, 2018, 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 November 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a highly respected expert in assisting organizations with corporate governance initiatives, has provided independent internal audits and business and technology risk consulting services since its founding in 2002. Complainant has rights in the PROTIVITI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,741,346, registered July 29, 2003). See Compl. Ex. 3. Respondent’s <protivitil.com> domain name is confusingly similar to Complainant’s mark as it appends the letter “L” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <protivitil.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Namecheap Namecheap / Namecheap.” See Amend. Compl. Ex. 1. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a website that is inactive, inaccessible, and cannot be found on the webhosting server. See Compl. Ex. 2.
iii) Respondent registered and uses the <protivitil.com> domain name in bad faith. Respondent has failed to make any current, active use of the domain name. See Compl. Ex. 2. Further, Respondent’s addition of the letter “L” to the end of the entire PROTIVITI mark amounts to typosquatting. Finally, Respondent had both actual and constructive knowledge of Complainant’s mark given the fact that Complainant has used the PROTIVITI mark since at least as early as 2002, and since that time, Complainant has become well-known and has established notoriety and goodwill in the worldwide marketplace.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent registered the <protivitil.com> domain name on August 9, 2018.
2. Complainant has established rights in the PROTIVITI mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,741,346, registered July 29, 2003).
3. The resolving webpage associated with the <protivitil.com> domain name remains inactive by displaying the message “This site can’t be reached.”
4. The PROTIVITI mark is well known and associated with Complainant and its services.
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.”).
Complainant claims rights in the PROTIVITI mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,741,346, registered July 29, 2003). See Compl. Ex. 3. Registration of a mark with the USPTO sufficiently confers a Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a Complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the PROTIVITI mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <protivitil.com> domain name is confusingly similar to Complainant’s mark as it appends the letter “L” along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel therefore finds that the <protivitil.com> domain name is confusingly similar to the PROTIVITI mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <protivitil.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a Complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the Complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Namecheap Namecheap / Namecheap” as the registrant. See Amend. Compl. Ex. 1. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the PROTIVITI mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the Complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <protivitil.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that the disputed domain name resolves to a website that is inactive, inaccessible, and cannot be found on the webhosting server. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage associated with the <protivitil.com> domain name, which displays the message “This site can’t be reached.” See Compl. Ex. 2. Accordingly, the Panel finds that Respondent fails to make any use of the domain name, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <protivitil.com> domain name in bad faith as Respondent has failed to make any current, active use of the domain name. As detailed above, Complainant provides a screenshot of the resolving webpage associated with the disputed domain name, which displays the message “This site can’t be reached.” See Compl. Ex. 2.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Continuously and exclusively since 2002, Complainant has used PROTIVITI as a trademark, alone or in combination with other words, in connection with Complainant’s various audit and consulting services. Since that time, Complainant has successfully obtained numerous trademark registrations for its PROTIVITI and PROTIVITI-formative marks in jurisdictions around the globe, including in the United States, Venezuela, Brazil, South Africa, Argentina, Canada, and Switzerland. Complainant spends an enormous amount of time, money, and effort in promoting its PROTIVITI mark and in developing its website accessible through the domain name <protiviti.com>. Complainant has advertised its services in domestic publications, such as the Wall Street Journal, Business Week, New York Times, Los Angeles Times, and CFO Magazine. Complainant has also advertised its services in international publications, such as Financial Times, CFO Australia, Option Finance, and Nikkei. Complainant has received many prestigious awards as a result of, in part, its services marketed and rendered under the PROTIVITI mark, including being named one of Forbes’ “Best Management Consulting Firms” in the years 2017 and 2018, being named a “Best Workplace in Consulting and Professional Services” by Fortune in the years 2017 and 2018, and being named to Fortune’s “100 Best Companies to Work For” list for the years 2015-2018. As a result of the broad-based advertising by Complainant under its PROTIVITI mark, the many prestigious awards, and Complainant’s extensive sales, the PROTIVITI mark is well known and associated exclusively with Complainant and its services.
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Additionally, Complainant avers that Respondent’s addition of the letter “L” to the end of the entire PROTIVITI mark amounts to typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Thus, the Panel finds that Respondent’s changes of Complainant’s mark in the disputed domain name further demonstrates Respondent’s bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s PROTIVITI mark at the time of registering the <protivitil.com> domain name. However, the Panel declines to accept arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the fact that Complainant has used the PROTIVITI mark since at least as early as 2002, and since that time, Complainant has become well-known and has established notoriety and goodwill in the worldwide marketplace. The Panel infers that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protivitil.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 7, 2018
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