Protiviti Inc. v. Rupa Jha / Protiviti Business Solutions
Claim Number: FA2010001918482
Complainant is Protiviti Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, United States. Respondent is Rupa Jha / Protiviti Business Solutions (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protivitisolutions.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2020; the Forum received payment on October 29, 2020.
On October 28, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <protivitisolutions.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 November 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2020 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@protivitisolutions.com. Also on November 3, 2020, 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 25, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
A. Complainant
Complainant claims rights in the PROTIVITI trademark and service mark established by its ownership of its portfolio of trademark registrations described below and its use of the mark in providing business consulting services to an international market.
Complainant refers to evidence of its use of the PROTIVITI mark exhibited in an annex to the Complaint and adds that it spends an enormous amount of time, money, and effort in promoting its PROTIVITI marks and associated services and in developing its website accessible through the domain name <protiviti.com>. Specifically Complaint states that its services and the PROTIVITI marks have been advertised and otherwise featured in domestic publications, such as the Wall Street Journal, Business Week, New York Times, Los Angeles Times, and CFO Magazine as well as in international publications, such as Financial Times, CFO Australia, Option Finance, and Nikkei.
Complainant alleges that the disputed domain name is confusingly similar to the PROTIVITI mark in which it has rights as it fully incorporates its PROTIVITI house mark, merely adding the generic or highly descriptive term “solutions” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant submits that the disputed domain name is highly similar in appearance, sight, sound, and connotation to Complainant’s PROTIVITI mark arguing that the addition of the term “solutions” and the gTLD <.com> extension are completely inadequate to distinguish the disputed domain name from Complainant’s PROTIVITI mark and to save it from a finding of confusing similarity.
Complainant argues that the addition of the generic or highly descriptive term “solutions” to the identical PROTIVITI house mark in the disputed domain name may actually add to the confusion in this case because the term “solutions” relates to Complainant’s business because Complainant offers various products and services that are colloquially characterized as “solutions”; and as a result of this combination, Internet visitors may believe, erroneously, that the disputed domain name is actually Complainant’s official webpage or is otherwise officially connected with or authorized by Complainant, none of which is true. See Bloomberg Finance L.P. v. Michael Goldstein, FA1705001732181 (“The addition of generic words—particularly words like “firm,” which pertain to a Complainant’s corporate activities— fail to sufficiently distinguish domain names from registered marks.”).
In addition, Complainant submits that it is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Isleworth Land Co. v. Lost In Space, SA, FA 0117330 (Forum Sep. 23, 2002).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because (i) Respondent is not commonly known by the disputed domain name or any derivation of the same; and (ii) Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods/services, nor does it constitute a non-commercial use or fair use of the disputed domain name.
Complainant submits that it is required to make a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name and in such circumstances the burden shifts to Respondent to demonstrate that he does, in fact, have rights or legitimate interests in the disputed domain name.
Complainant submits that Respondent is not commonly known by the disputed domain name, as the WHOIS registration record for the disputed domain name identifies Respondent as Rupa Jha of the registrant organization “Protiviti Business Solutions”, whose information was initially privacy protected but has recently been revealed. See Citigroup Inc. v. Creative Citygroup Inc., FA1306001504889 (Forum Aug. 1, 2013) (finding that the respondent was not actually commonly known by the disputed domain name <creativecitigroup.com> despite the fact that the WHOIS record listed “Creative Citygroup Inc.” as the registrant).
While the registrant organization name “Protiviti Business Solutions” may suggest that Respondent is attempting to be known in some capacity by the disputed domain name or a derivation thereof, it cannot actually establish that Respondent is, in fact, commonly known by the disputed domain name. Cargill, Inc. v. Cargill Stock, Inc., FA 0807001214695 (Forum Aug. 18, 2008) (finding that the respondent was not actually commonly known by the disputed domain name <cargillstock.com> despite the fact that the WHOIS record identified the registrant as “Cargill Stock, Inc.”); Mainstream Advertising v. Bullhorn Marketing, LLC, FA 1008001338435 (Forum Oct. 5, 2010) (finding that the respondent was not actually commonly known by the disputed domain names beginning with “bullhorn” despite the fact that the WHOIS record identified the registrant as “Bullhorn Marketing, LLC/Nathan Barnett”).
Additionally Complainant alleges that Respondent cannot prove that it is lawfully and legitimately commonly known by the name “Protiviti Business Solutions,” by the disputed domain name, or by any derivation thereof because Complainant owns the exclusive rights to the PROTIVITI at least the United States and India where Respondent is based.
Complainant asserts that it has not authorized Respondent, or any persons or entities associated therewith, to use or register the PROTIVITI mark in any manner, including in the disputed domain name and adds that Respondent is not a current or former licensee of Complainant for use of its PROTIVITI mark.
Complainant furthermore submits that to the extent that Respondent does not reply in this case, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name.
Referring to declarations of an employee of the parent corporation of Complainant and its legal representative that have been annexed to the Complaint which exhibit screenshots of the website to which the disputed domain name resolves, Complainant further alleges that Respondent cannot show a bona fide use nor any legitimate non-commercial or fair use of the disputed domain name. The screenshots show that the disputed domain name resolves to a website hosting generic hyperlinks that, in at least some instances, relate to Complainant and its business and/or redirect Internet users to other companies’ websites, presumably for Respondent’s commercial gain through receipt of click-through fees. For example, while the hyperlinks may change from time-to-time, the hyperlinks, in at least some instances, have titles like “Consulting Services” and “Business Consulting Services,” which obviously relate to Complainant’s consulting business, and after clicking on at least some of these links, Internet users may be redirected to other companies’ websites.
Complainant submits that such use of the disputed domain name cannot constitute a bona fide offering of goods and services or a non-commercial or fair use of the disputed domain name under the Policy. See WestJet Air Center, Inc. v. West Jets LLC, FA0103000096882 (finding that respondent’s use of the domain name in connection with a for-profit business could not prove a legitimate interest in the domain name under Policy ¶ 4(c)(iii) because it does not amount to a non-commercial or fair use of the domain name).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that the evidence adduced clearly shows that Respondent “intentionally attempted to attract, for commercial gain, Internet users” to the disputed domain name “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the disputed domain name.
Complainant submits that it is inconceivable that Respondent did not have actual knowledge of Complainant and its rights in the PROTIVITI marks before registering the disputed domain name.
Complainant alleges that the evidence adduced and the totality of the circumstances surrounding the use and registration of the disputed domain name undoubtedly demonstrate that Respondent had actual knowledge of Complainant and its well-known PROTIVITI house mark, before registering the disputed domain name. Complainant has continuously and exclusively used and developed a reputation and goodwill in the PROTIVITI mark since at least as early as 2002 and over that time it has become well-known with established notoriety and goodwill in the worldwide marketplace.
Complainant adds that panels established under the Policy have consistently held that “there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA 0209000124506 (Forum Oct. 24, 2002).
Complainant further argues that the registrant of the disputed domain name was aware of Complainant and its mark because the disputed domain name incorporates the entire PROTIVITI house mark with the generic or highly descriptive term “solutions,” which relates Complainant’s consulting services or “solutions,” was registered more than fifteen (15) years after Complainant first used the PROTIVITI house mark. See Protiviti Inc. v. Cimpress Schweiz GmbH, FA1904001839327 (Forum May 21, 2019) (finding bad faith use and registration based, in part, on the respondent having actual knowledge under similar circumstances).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides business consulting services under the PROTIVITI trademark and service mark for which it owns a portfolio of trademark registrations including the following:
· United States registered service mark PROTIVITI, registration number 2,741,346, registered on the Principal Register on July 29, 2003 for services in international class 35;
· United States registered service mark PROTIVITI (stylized), registration number 2,773,603, registered on the Principal Register on October 14, 2003 for services in international class 35;
· United States registered service mark PROTIVITI MOBILITI, registration number 4,747,048, registered on the Principal Register on June 2, 2015 for services in international class 35;
· United States registered trademark THE PROTIVITI RISK INDEX, registration number 5,456,482, registered on the Principal Register on May 1, 2018 for goods in international class 9;
· United States registered trademark PROTIVITI, registration number 5511808, registered on the Principal Register on July 10, 2018 for goods in international class 9;
· India registered trademark PROTIVITI, registration number 1,302,470, registered on August 13, 2004 for services in class 35;
· India registered trademark PROTIVITI (stylized) registration number 1,302,469. Registered on 13 August 2004 for services in class 35.
Complainant has an established Internet presence and maintains a website that provides information and details regarding its services and links to the websites of its worldwide affiliates, to which its domain name <protiviti.com> resolves.
The disputed domain name was registered on September 9, 2020 and resolves to a webpage displaying generic hyperlinks that, in some instances, relate to Complainant and its business and/or redirect visitors to other companies’ websites.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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 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”).
Complainant has adduced clear, convincing, and uncontested evidence that it holds rights in the PROTIVITI trademark and service mark established by its ownership of its portfolio of trademark registrations described above and its use of the mark in providing business consulting services to an international market including in India where Respondent is based.
The disputed domain name consists of Complainant’s PROTIVITI trademark and service mark in its entirety, in combination with the generic and descriptive term “solutions” and the gTLD extension <.com>.
Complainant’s mark is the initial, dominant, and only distinctive element within the disputed domain name. The descriptive term “solutions” adds no distinguishing characteristic to the disputed domain and fact it is likely to be taken as a reference to Complainant’s consultancy business.
For the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name PROTIVITI is confusingly similar to the trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i)
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging
· that Respondent is not commonly known by the disputed domain name, as the WHOIS registration record for the disputed domain name identifies the registrant as Rupa Jha and the organization “Protiviti Business Solutions”;
· that while the registrant organization name “Protiviti Business Solutions” may suggest that Respondent is attempting to be known in some capacity by the disputed domain name or a derivation thereof, it cannot actually establish that Respondent is, in fact, commonly known by the disputed domain name;
· that Respondent cannot prove that it is lawfully and legitimately commonly known by the name “Protiviti Business Solutions,” by the disputed domain name, or by any derivation thereof because Complainant owns the exclusive rights to the PROTIVITI at least the United States and India where Respondent is based;
· that Complainant has not authorized Respondent, or any persons or entities associated therewith, to use or register its PROTIVITI mark in any manner, including in the disputed domain name;
· that Respondent is not a current or former licensee of Complainant for use of its PROTIVITI mark;
· that to the extent that Respondent does not reply in this case, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name;
· that the declarations of its employee of the parent corporation of Complainant and its legal representative annexed to the Complaint exhibit screenshots that show that the website to which the disputed domain name resolves, hosts generic hyperlinks that, in at least some instances, relate to Complainant and its business and/or redirect Internet users to other companies’ websites, presumably for Respondent’s commercial gain through receipt of click-through fees;
· that while the hyperlinks may change from time-to-time, the hyperlinks, in at least some instances, have titles like “Consulting Services” and “Business Consulting Services,” which obviously relate to Complainant’s consulting business, and after clicking on at least some of these links, Internet users may be redirected to other companies’ websites; and
· that such use of the disputed domain name cannot constitute a bona fide offering of goods and services or a non-commercial or fair use of the disputed domain name under the Policy.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden of production.
In these circumstances this Panel must find that on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the distinctive character of Complainant’s PROTIVITI mark and that the disputed domain name is composed of Complainant’s mark in its entirety in combination with the term “solutions” which is descriptive of Complainant business consultancy services, this panel finds that it is implausible that the registrant of the disputed domain name was unaware of Complainant, its name, mark, reputation, goodwill, and Internet presence when the disputed domain name was chosen and registered.
This Panel finds that the disputed domain name was chosen and registered in bad faith in order to target Complainant, its reputation and goodwill.
The uncontested evidence adduced by Complainant shows that the disputed domain name is being used to resolve to a webpage displaying generic hyperlinks that, in some instances, relate to Complainant and its business and/or redirect visitors to other companies’ websites. On the balance of probabilities Respondent is benefiting from pay-per-click revenue from his webpage. The evidence therefore shows that on the balance of probabilities Respondent is taking predatory advantage of Complainant’s reputation and trademark in order to generate income.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempted to attract, for commercial gain, Internet users to his webpage displaying generic hyperlinks by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his webpage in order to generate income.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protivitisolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: November 26, 2020
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