Protiviti Inc. v. Carol Borgert
Claim Number: FA2006001901718
Complainant is Protiviti Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, Illinois, USA. Respondent is Carol Borgert (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protiiviti.online>, registered with Hostinger, UAB.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2020; the Forum received payment on June 26, 2020.
On June 26, 2020, Hostinger, UAB confirmed by e-mail to the Forum that the <protiiviti.online> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 June 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@protiiviti.online. Also on June 30, 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 July 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is an expert in assisting organizations with corporate governance initiatives, provides independent internal audits, and business and technology risk consulting services. Complainant has rights in the PROTIVITI trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,741,346, registered July 29, 2003). Respondent’s <protiiviti.online> domain name is confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s PROTIVITI trademark, adding only an extra “i” after the first “t” in PROTIVITI (i.e., PROTIVITI vs. PROTIIVITI) and the “.online” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <protiiviti.online> domain name. Respondent is not licensed or authorized to use Complainant’s PROTIVITI trademark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent does not have a website at the resolving webpage of the disputed domain name. Respondent’s misspelling of the PROTIVITI trademark demonstrates typosquatting behavior.
Respondent registered and uses the <protiiviti.online> domain name in bad faith. By registering a domain name that incorporates a minor misspelling of Complainant’s PROTIVITI trademark, Respondent is engaged in typosquatting. Additionally, Respondent fails to make active use of the domain name. Lastly, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the PROTIVITI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,741,346 PROTIVITI (word), registered July 29, 2003 for services in classes 35, 36 and 42;
No. 2,773,603 PROTIVITI (stylized), registered October 14, 2003 for services in classes 35, 36 and 42;
No. 4,747,048 PROTIVITI MOBILITY (word), registered June 2, 2015 for services in class 35;
No. 5,456,482 THE PROTIVITY RISK INDEX (word), registered May 1, 2018 for goods and services in classes 9, 35, 36 and 42; and
No. 5,511,808 PROTIVITY (word), registered July 10, 2018 for goods and services in classes 9, 16, 35, 36, 41, 42 and 45.
The disputed domain name was registered on January 21, 2020.
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”).
The Complainant asserts rights in the PROTIVITI trademark based upon its registration of the trademark with the USPTO (e.g., Reg. No. 2,741,346, registered Jul. 29, 2003). See Compl. Registration of a trademark with the USPTO is generally sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of its registrations of the PROTIVITI trademark with the USPTO, therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <protiiviti.online> domain name in confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s PROTIVITI trademark, adding only the “.online” gTLD and misspelling the trademark by adding the letter “i”. The addition of a single letter and a gTLD to a trademark may not negate any confusing similarity between a disputed domain name and trademark under 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’). Thus, the Panel find that the disputed domain name is confusingly similar to the PROTIVITI trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent does not have rights or legitimate interests in the <protiiviti.online> domain name because Respondent is not licensed or authorized to use Complainant’s PROTIVITI trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a trademark can constitute a further showing that a respondent lacks rights in a trademark. 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). The WHOIS information of record notes “Carol Borgert” as the registrant and no information in the record suggest that Complainant has authorized Respondent to use the PROTIVITI trademark in any way. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent does not have a website at the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)”). Here, Complainant has provided a screenshot of Respondent’s inactive web page which states “this site can’t be reached.” The Panel therefore agree with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant alleges that Respondent is engaged in typosquatting by duplicating the PROTIVITI trademark with a slight deviation. Typosquatting provides additional evidence that a respondent lacks rights and legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii)”). Here, Complainant alleges Respondent is taking advantage of Internet users’ typographical errors by adding the letter “i” within the domain name. The Panel, noting also that Complainant’s trademark is indeed distinctive, agree with Complainant and find that Respondent lacks rights and legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii).
The Panel note that Complainant has not made arguments under Policy ¶ 4(b), however such arguments are not required under the Policy - so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (FORUM Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore find that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
The Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Specifically, Complainant contends that Respondent engages in typosquatting. Misspelling of a complainant’s trademark in order to commercially benefit from a confusing similarity between a disputed domain name and the trademark 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).”). As noted above, Respondent merely adds an additional letter “i” within the PROTIVITI trademark. Thus, the Panel agree and find that Respondent’s substitution of a single letter in Complainant’s trademark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Complainant also asserts that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the disputed domain name which resolves to an inactive website. Therefore, Panel find that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s PROTIVITI trademark. The Panel note that while constructive notice of a complainant’s trademark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant”). Complainant claims that due to the fame of the PROTIVITI trademark, Complainant’s long standing use of the trademark, and Respondent’s use of the disputed domain name which features Complainant’s trademark in its entirety render it wholly implausible that Respondent created the domain name independently. Therefore, the Panel agree that Respondent had actual knowledge of Complainant’s rights in the PROTIVITI trademark, and thus constitutes 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 <protiiviti.online> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 30, 2020
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