DECISION

 

Protiviti Inc. v. Luster Gaerten

Claim Number: FA2407002106296

PARTIES

Complainant is Protiviti Inc. ("Complainant"), represented by Robert Weisbein of Foley & Lardner LLP, New York, USA. Respondent is Luster Gaerten ("Respondent"), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <protivitinw.com>, registered with Gname.com Pte. Ltd..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 15, 2024; Forum received payment on July 15, 2024.

 

On July 18, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <protivitinw.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 July 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2024 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@protivitinw.com. Also on July 19, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is a highly respected global consulting firm assisting companies with corporate governance initiatives, as well as solutions for business problems in technology, business processes, analytics, risk, compliance, and internal audits. 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 Fortune's "Best Workplaces for Millennials" in 2023, being named to Fast Company's "100 Best Workplaces for Innovators" in 2022-2023, and being named to Fortune's "100 Best Companies to Work For" list for the years 2015-2023. In 2023, Complainant rendered services that exceeded $1.9 billion U.S. dollars in revenue. Complainant has rights in the PROTIVITI mark based on its registration of the mark in the United States in 2003. The mark is registered elsewhere around the world. The mark is well known.

 

Complainant alleges that the disputed domain name is confusingly similar to its PROTIVITI mark because it incorporates the mark in its entirety and merely adds the letters "nw" and the ".com" generic top level domain ("gTLD").

 

According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as there is no affirmative evidence that Respondent is commonly known by the disputed domain name and Complainant has not authorized or permitted Respondent to use the PROTIVITI mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in an attempt to pass itself off as Complainant as part of a nefarious scheme. Respondent's scheme includes contacting victims and instructing them to proceed to the website associated with the disputed domain name where they are asked to complete various tasks, such as purchasing various products using cryptocurrency and leaving reviews, after which the victim will supposedly be reimbursed and given a "commission." Complainant learned of Respondent's fraudulent scheme when a victim reached out to Complainant inquiring as to whether the disputed domain name is associated with Complainant. The victim informed Complainant that he had been contacted via WhatsApp by someone who identified themselves as allegedly working with Complainant. The victim was offered a job with Complainant if he completed tasks allocated through the resolving website for which the victim was given an access code. The victim was initially offered $10 USD to sign up and then was given a "purchase order" list to purchase items using cryptocurrency, with the promise that Complainant would reimburse the funds. The victim received WhatsApp messages from the Respondent explaining that Complainant had offices predominantly in the US, with an office in Melbourne. Such messages included the address of Complainant's Melbourne office and the name of Complainant's Managing Director and Market Lead in the Melbourne office. Respondent's use and registration of the disputed domain name in the manner described above is a blatant attempt to create a likelihood of confusion with the PROTIVITI mark, is likely to mislead Internet visitors into believing Respondent and the disputed domain name are actually Complainant or are affiliated with Complainant, none of which is true.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant in furtherance of a fraudulent scheme. Respondent had actual knowledge of Complainant's rights in the PROTIVITI mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the mark PROTIVITI dating back to 2003 and uses it to provide consulting services.

 

The disputed domain name was registered in 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent uses the disputed domain name to pass off as Complainant in furtherance of a fraudulent scheme. Respondent's messages to users included the address of one of Complainant's offices and the name of the manager of that office. The WHOIS information is false.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's PROTIVITI mark in its entirety and merely adds the letters "nw" and the ".com" generic top level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also 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)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.'  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent is neither an authorized user nor licensee of Complainant's mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information of record indicates that the disputed domain name was registered by "Luster Gaerten". Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent uses the disputed domain name to pass off as Complainant. This indicates an attempt to impersonate Complainant, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Edible Communities v. Thoreau,  FA0803001158554 (Forum Apr. 16, 2008) ("[R]espondent's use of the disputed domain name [<theedibleaustin.com>] to pass itself off as [c]omplainant shows that [r]espondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) as well as Policy ¶ 4(c)(iii)."); see also Digg v. Digg , FA0808001220833 (Forum Oct. 9, 2008) (finding no legitimate interest in respondent's use of the domain name <digg-inc.com> because "[r]espondent is attempting to pass itself off as [c]omplainant" and such "actions do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Complainant presents evidence showing that the disputed domain name is used in furtherance of a fraudulent scheme. Previous Panels have found that this is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int'l Inc., FA 1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of domain name). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, the resolving website attempts to impersonate Complainant. This can evince bad faith registration and use under Policy ¶ 4(a)(iii). See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA0304000156251 (Forum May 30, 2003) (the resolving website gave every appearance of being associated or affiliated with Complainant's business); see also Mortgage Research Center LLC v. Russell Miranda, FA0705000993017 (Forum July 9, 2007) (Respondent is implying an affiliation with Complainant, and consumers seeking Complainant's products and services may become confused when encountering Respondent's website). Thus the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).

 

Further, also as already noted, the disputed domain name is used in furtherance of a fraudulent scheme. This is evidence of bad faith registration and use under the Policy. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that disputed domain name was registered and used in bad faith where respondent hosted a website that "duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark"); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through respondent's registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant's famous marks and likeness); see also Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant's trademark indicates Respondent's bad faith). Consequently, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).

 

In addition, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: Respondent's messages to users included the address of one of Complainant's offices and the name of the manager of that office. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also 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."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this too constitutes bad faith under Policy ¶ 4(a)(iii).

 

Finally, the WHOIS information is:

Full Name: Luster Gaerten

Address: US Indiana East Chicago 3804 Parrill Court

Telephone: +1 2193788563

Company: NIL

Postcode: 46312

 

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

From publicly available databases, the Panel has found that there is no "Parrill Court" in East Chicago, Indiana, USA. Thus the Panel finds that that WHOIS information is false. This can indicate bad faith registration and use. See Enterprise Holdings, Inc. v. John Doe, FA1008001339545 (Forum Sept. 29, 2010 ) ("The Panel also takes into account that the entity that Responded to the Complaint would not be the registrant of the disputed domain names for the instant proceedings. Therefore, that circumstance is also taken by the Panel as indication of bad faith under Policy ¶ 4(a)(iii) by providing false or misleading WHOIS information to the registrar."); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Accordingly, the Panel finds bad faith registration and use on this ground also.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <protivitinw.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Richard Hill, Panelist

Dated: August 9, 2024