Protiviti Inc. v. Cimpress Schweiz GmbH
Claim Number: FA1904001839327
Complainant is Protiviti Inc. (“Complainant”), represented by Robert Weisbein of Foley & Lardner LLP, Illinois, USA. Respondent is Cimpress Schweiz GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prativiti.com>, registered with Tucows Domains 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.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on April 17, 2019; the Forum received payment on April 19, 2019.
On April 18, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <prativiti.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2019 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@prativiti.com. Also on April 25, 2019, 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 May 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a highly respected expert that assists organizations with corporate governance initiatives, provides independent internal audits, and offers business technology risk consulting services since 2002. Complainant has rights in the PROTIVITI mark through its trademark registrations around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,741,346, registered Jul. 29, 2003). Respondent’s <prativiti.com> domain name is identical or confusingly similar to Complainant’s PROTIVITI mark as it incorporates the mark almost in its entirety, replacing only the letter “o” with the visually similar letter “a,” while adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <prativiti.com> domain name. Respondent is not licensed or authorized to use Complainant’s PROTIVITI mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to an inactive page. Further, Respondent uses the disputed domain name in furtherance of a phishing scheme.
Respondent registered and uses the <prativiti.com> domain name in bad faith. Respondent uses the disputed domain name to impersonate one of Complainant’s employees via email in furtherance of a phishing scheme. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the PROTIVITI mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <prativiti.com> domain name.
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 claims rights in the PROTIVITI mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,741,346, registered Jul. 29, 2003). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel holds that Complainant’s registration of the PROTIVITI mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <prativiti.com> domain name is identical or confusingly similar to the PROTIVITI mark as it incorporates the mark almost in its entirety, replacing only the letter “o” with the visually similar letter “a,” while adding the “.com” gTLD. Merely changing a letter and adding a gTLD to a complainant’s mark does not distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). The Panel finds that the <prativiti.com> domain name is confusingly similar to the PROTIVITI mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <prativiti.com> domain name because Respondent is not commonly known by the disputed domain name nor was Respondent authorized to use Complainant’s PROTIVITI mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ (c)(ii). 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). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name; see also 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). The WHOIS information identifies Respondent as “Cimpress Schweiz GmbH” and there is nothing in the record to suggest that Respondent is authorized to use the PROTIVITI mark. The Panel finds that Respondent is not commonly known by the <prativiti.com> domain name per Policy ¶ (c)(ii).
Complainant further argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive page. Panels have held that the use of a domain name to resolve to inactive or inaccessible webpages does not amount to a bona fide use or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant has stated that the screenshots of Respondent’s domain name show the site is under construction. The Panel finds that Respondent’s use of the domain name to resolve to an inactive page does not amount to a bona fide use or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant additionally argues that Respondent uses the <prativiti.com> domain name to impersonate one of Complainant’s executives in connection with a fraudulent email phishing scheme. Panels have held that the using a domain name to gather personal or financial information from Internet users does not establish rights or legitimate interests in respect of the domain name under Policy ¶4(c)(i). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant has attached declarations from Complainant’s about the fraudulent emails received by Complainant’s employees. The Panel finds that Respondent’s use of the domain name to engage in a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Panel finds Respondent lacks rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <prativiti.com> domain name in bad faith as Respondent uses the disputed domain name in furtherance of a phishing scheme. Panels have held that using an email address associated with a disputed domain name to pass off as an employee of a complainant for purposes of phishing is evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant has provided the Panel with a statement from employees stating how Respondent impersonated employees in attempts to gain financial and personal information. The Panel finds this is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Complainant further argues that the <prativiti.com> domain name resolves to an inactive page which is evidence of bad faith registration and use. Panels have held that failure to make any current or active use of a webpage can demonstrate bad faith registration. 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).”). The Panel finds this is evidence that Respondent’s inactive and non-use of the disputed domain name constitutes bad faith registration under policy ¶ 4(a)(iii).
Complainant contends that Respondent has engaged in typosquatting. Panels have held that when a registrant deliberately introduces typographical errors or misspellings into a domain name and then uses the resulting domain name hoping the Internet visitors will confuse the domain name with a complainant’s mark, that this can demonstrate bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Complainant has shown that Respondent replaced the letter “o” in the PROTIVITI mark with the letter “a” to create a visually similar mark in hopes to confuse Internet users looking for the PROTIVITI mark. The Panel finds that Respondent engaged in typosquatting which is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant argues Respondent had actual knowledge of Complainant’s rights in the PROTIVITI mark at the time Respondent registered and subsequently used the <prativti.com> domain name and this indicates bad faith registration and use. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant contends that the extensive, global use and fame of the PROTIVITI mark as well as Respondent’s use of the disputed domain name to pass itself off as Complainant indicates Respondent had actual knowledge of Complainant’s rights in the mark. Complainant has provided a statement from employees stating how Respondent impersonated employees in attempts to gain financial and personal information. The Panel finds that Respondent had actual notice of Complainant’s rights in the PROTIVITI mark and registered and uses the domain name in bad faith per Policy ¶ (4)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <prativiti.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 21, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page