Complainant is Insight Global, LLC, United States of America (“United States” or “U.S.”), represented by Troutman Pepper, United States.
Respondent is Contact Privacy Inc. Customer 0156408630, Canada / Janine Harris, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on November 19, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundComplainant was founded in 2001 as a start-up company providing staffing services. Complainant has grown substantially since its founding, and now has 60 sales offices, including 59 in the United States. Complainant owns several United States trademark registrations for marks containing the word element “insight global”, including:
- INSIGHT GLOBAL A STAFFING SERVICES COMPANY & Design (U.S. Reg. No. 3,630,697), registered on June 2, 2009, in Class 35;
- INSIGHT GLOBAL DIRECT PLACEMENT STAFFING & Design (U.S. Reg. No. 4,849,927), registered on November 10, 2015, in Class 35; and
- INSIGHTGLOBAL & Design (U.S. Reg. No. 4,997,327), registered on July 12, 2016, in Class 35.
Complainant also owns a domain name registration for
The disputed domain name was registered on December 6, 2019. At the time the Complaint was filed and currently, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is virtually identical to Complainant’s INSIGHT GLOBAL trademarks, in which Complainant has rights as demonstrated through its cited registrations. Complainant states that the only difference between the disputed domain name and the INSIGHT GLOBAL trademarks is the replacement of the first letter of the disputed domain name, “i”, with a lowercase “l”, which characters look nearly identical (known as homograph spoofing). Complainant contends that thus, the disputed domain name is confusingly similar to Complainant’s trademarks.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that the disputed domain name does not currently resolve to an active website, and thus there is no bona fide offering of goods or services associated with the disputed domain name. Complainant asserts that there is no evidence that Respondent is commonly known by the disputed domain name and that there is no evidence that Respondent has ever used either “insight global” or “lnsight global” prior to registration of the disputed domain name. Thus, Complainant contends that there is no legitimate reason for Respondent to have registered a domain name that is a homographic spoof of Complainant’s trademarks.
Complainant asserts that the disputed domain name has been registered and used in bad faith. Complainant contends that Respondent knew or should have known of Complainant’s mark at the time the disputed domain name was registered, and that there cannot be an intended use for a homographic spoof of a domain name that is not in bad faith. Complainant also argues that the uniqueness of Complainant’s mark makes it unlikely that Respondent would have thought of “lnsight global” without being aware of Complainant’s mark, further supporting Complainant’s assertions of bad faith registration and use.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(f) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default would not by itself satisfy a complainant’s burden of proof, and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns several registrations in the United States for trademarks containing the terms “insight global”, as referenced above. Therefore, Complainant has established that it has rights in the INSIGHT GLOBAL mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” Id.
Here, the disputed domain name incorporates the INSIGHT GLOBAL trademark in its entirety, aside from the substitution of the initial letter “i” with the letter “l”, which is virtually identical in appearance. Prior UDRP panels have generally found that the substitution of one character with another virtually identical character, known as homograph spoofing, does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Wolf Oil Corporation N.v. v. Peter Hugeman, WIPO Case No. D2016-1398.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its INSIGHT GLOBAL mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not commonly known by the disputed domain name. As the disputed domain name does not resolve to an active website, Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name, and, particularly in the absence of a response that might detail any rights or legitimate interests, Respondent’s use of the disputed domain name also cannot be considered a bona fide offering of goods or services.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIn this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the INSIGHT GLOBAL trademarks prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the INSIGHT GLOBAL trademark when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
Respondent is currently holding the disputed domain name passively. “From the inception of the UDRP, panelists have found that the non-use of a domain name, (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the concealment of the respondent’s identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” WIPO Overview 3.0, section 3.3. The passive holding doctrine applies in this case because (i) Complainant’s mark is highly distinctive, (ii) Respondent failed to come forward with any evidence of a conceivable good faith use for the disputed domain name, (iii) Respondent’s use of a privacy service to conceal its identity, (iv) and it is implausible that Respondent can put the disputed domain name to any conceivable good faith use without infringing upon Complainant’s rights in its INSIGHT GLOBAL marks. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name that is a homograph spoof of Complainant’s INSIGHT GLOBAL trademarks with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users for Respondent’s commercial gain. Prior UDRP panels have found that homograph spoofing represents registration and use in bad faith, even when a disputed domain name does not resolve to any active website content. See Crescent Communities, LLC v. Registration Private, Domains By Proxy, LLC / Kimberly Hill,WIPO Case No. D2021-1740.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name is in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Brian J. Winterfeldt
Sole Panelist
Date: December 3, 2021