ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Insight Direct USA, Inc. v. Machotech, luna Morgan Case No. D2023-3836 1. The Parties The Complainant is Insight Direct USA, Inc., United States of America ("United States"), represented by Reed Smith LLP, United States. The Respondent is Machotech, luna Morgan, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 6, 2023. On September 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 28, 2023. 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 the Respondent of the Complaint, and the proceedings commenced on September 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2023. The Respondent did not submit any response by the specified due date. Accordingly, the Center notified the Respondent's default on October 25, 2023. page 2 The Center appointed Kathryn Lee as the sole panelist in this matter on November 2, 2023. 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. The Respondent sent an email communication to the Center on November 29, 2023. 4. Factual Background The Complainant is a subsidiary of Insight Enterprises, Inc., a publicly traded Fortune 500-listed technology company which provides business-to-business and information technology to enterprises. The Complainant has operations in 19 countries, and in 2022, had 10.4 billion USD in net sales and a gross profit of 1.6 billion USD. The Complainant has used the INSIGHT mark in connection with business since around 1989, and owns trademark registrations for INSIGHT and INSIGHT-formative marks in a number of countries worldwide including the following registered in the United States: - INSIGHT (word mark), registered on July 29, 2008 (Trademark Registration Number 3,474,837); - INSIGHTCLOUD (word mark), registered on September 3, 2013 (Trademark Registration Number 4,396,558); and - INSIGHT ONECALL (word mark), registered on July 6, 2021 (Trademark Registration Number 6,411,749). The Respondent appears to be an entity with an address in the United States. The disputed domain name was registered on April 23, 2020, and currently does not resolve to any active website. According to the evidence provided by the Complainant, on July 10, 2023, the disputed domain name resolved to a website that was highly similar to, and mirrored substantial portions of the Complainant's website at the domain name . The website not only featured the Complainant's name and logo, but also displayed the FAQs, Terms of Use, and Privacy Policy, as well as a global listing of the Complainant's office locations by copying those from the Complainant's Canadian website. The disputed domain name has also been used for sending fraudulent emails. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the INSIGHT trademark in which the Complainant has rights. Specifically, the Complainant contends that the disputed domain name contains the INSIGHT mark in its entirety, only with a letter "s" at the end of the mark which does not affect confusing similarity, and an additional term "tech" which is a generic descriptor, and that neither eliminates nor reduces the risk of confusion. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant states that the disputed domain name for a period resolved to a website that was highly similar to, and mirrored substantial portions of, the website for the Complainant's Canadian office, and impersonated the Complainant in attempts to deceive Internet visitors into disclosing sensitive information and transferring funds. Specifically, the Complainant contends that the Respondent (i) offered non-existent remote jobs to job-seekers, (ii) advised them that the Complainant was the official IT vendor for the employer, (iii) instructed them to visit the disputed domain name to speak with a specialist and get a quotation for required IT equipment, (iv) promised to provide reimbursements for the purchase of the equipment, and (v) issued fraudulent invoices prominently featuring the Complainant's name and logo. The Complainant contends that using a domain name in furtherance of unlawful activity cannot confer rights or legitimate interests on a respondent. page 3 Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainant contends that the registration of the disputed domain name that is confusingly similar to a famous trademark creates a presumption of bad faith, and that it is clear that the Respondent knew of the Complainant and its INSIGHT marks at the time of registration of the disputed domain name given the Respondent's use of the disputed domain name to display contents from the Complainant's website. In addition, the Complainant contends that the Respondent has used the disputed domain name to impersonate the Complainant in order to induce Internet visitors to disclose sensitive information and perpetuate fraud. The Complainant also contends that the Respondent is currently not making use of the disputed domain name, and that it is inconceivable that the Respondent could make any active good faith use of the disputed domain name given the association with the Complainant's famous mark. B. Respondent The Respondent did not formally reply to the Complainant's contentions. On November 29, 2023, the Center received an email communication from the Respondent asking "[h]ow can I help?". 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated with supporting evidence that it has rights to the trademark INSIGHT. As for the disputed domain name, it consists of "insight" with a letter "s" added to the end, along with the term "tech" separated by a hyphen. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7, a domain name is considered confusingly similar to a trademark if it "incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name". In this regard, the Complaint's mark is readily recognizable within the disputed domain name, and neither the letter "s" nor the term "tech" prevents a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). Therefore, the disputed domain name is confusingly similar to the Complainant's trademark. For the reasons mentioned above, the Panel finds that the first element has been established. B. Rights or Legitimate Interests On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie case has been established, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining with the Complainant. However, the Respondent in this case has chosen to file no substantive Response to these assertions by the Complainant, and there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point. Further, the Complainant has submitted evidence showing that as recently as July 2023, the disputed domain name resolved to a website featuring the Complainant's name and logo and portions such as FAQs, Terms of Use, and Privacy Policy, and global list of locations on the website were essentially identical in content to that on the Complainant's Canadian website. The Complainant has also submitted screen captures of a chat screen showing a remote job being offered to an applicant and the applicant being directed to the disputed domain name for a quotation on the required equipment for the job. Moreover, the Complainant has submitted evidence showing that the disputed domain name was used for sending fraudulent emails. The use of a domain name for illegal activity can never confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1. page 4 For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established. C. Registered and Used in Bad Faith The Panel finds that there is sufficient evidence to find bad faith in this case. First and foremost, the Respondent used the disputed domain name to replicate exact contents of the Complainant's Canadian website and passed itself off as the Complainant. The Complainant has submitted screen captures of the Respondent's offering a remote job to a job-seeker and inviting the job-seeker to contact a specialist at the disputed domain name for required equipment for the job. The Complainant has also submitted emails from individuals who claimed that they had been defrauded in this exact scheme. Further, considering such fraudulent use of the disputed domain name and previous content hosted on the website at the disputed domain name, it is quite clear that the Respondent registered the disputed domain name with knowledge of the Complainant and the Complainant's trademark. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. The Panel also finds that using a domain name in a fraudulent activity is manifestly evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.1.4 and section 3.4. The current non-use of the disputed domain name dose not change the Panel's finding on the Respondent's bad faith. For the reasons given above, the Panel finds that the third element has been established. 7. Decision For 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 be transferred to the Complainant. /Kathryn Lee/ Kathryn Lee Sole Panelist Date: December 1, 2023
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