Protiviti Inc. v. Manager, Webserv c/o
webserv LLC
Claim
Number: FA0505000471955
Complainant is Protiviti Inc. (“Complainant”), represented
by Andrew Baum of Darby & Darby P.C. 805 Third Avenue, New York, NY, 10022. Respondent is Manager, Webserv c/o webserv LLC (“Respondent”), 8 Copthall, Roseau, Roseau, 00152 Dominica.
The
domain name at issue is <protivity.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically May 4,
2005; the National Arbitration Forum received a hard copy of the Complaint May
4, 2005.
On
May 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <protivity.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
May 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@protivity.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent
registered, <protivity.com>, is confusingly similar to
Complainant’s PROTIVITI mark.
2. Respondent has no rights to or legitimate
interests in the <protivity.com> domain name.
3. Respondent registered and used the <protivity.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Protiviti Inc., is a Delaware corporation, which is a leading international
provider of independent internal audit and business and technology risk
consulting services. Complainant
employs some 1,500 staff members in nearly 50 offices throughout Asia, Europe,
Australia, Latin America and North America.
Complainant’s revenue for fiscal years 2003 and 2004 exceeded $485
million. Complainant has used the
PROTIVITI mark in commerce since 2002 and has expended an enormous amount of
time, effort and money in promoting its PROTIVITI mark world-wide.
Complainant
registered the PROTIVITI mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,741,346 issued July 29, 2003).
Respondent
registered the <protivity.com> domain name January 2, 1997.
Respondent’s domain name resolves to a website featuring links to competing
goods and 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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Respondent’s
registration of the disputed domain name predates by several years any use of
the PROTIVITI mark by Complainant.
Thus, the Panel holds that Complainant has not satisfied Policy ¶
4(a)(i) because Complainant’s initial use of the mark does not predate
Respondent’s registration of the disputed domain name. See Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that Complainant may have in its common law mark did not predate
Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i)
had not been satisfied); see also Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s registration of the
domain name”).
Since
Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the
Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the
Policy. See Creative Curb v. Edgetec International Pty.
Ltd., FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because Complainant must prove all three elements
under the Policy, Complainant's failure to prove one of the elements makes
further inquiry into the remaining element unnecessary).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that the petition for relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 21, 2005
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