ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Insight Global, LLC v. Taylor Samuel, INSIGHT GLOBAL Case No. D2024-3430 1. The Parties Complainant is Insight Global, LLC, United States of America (“United States” or “U.S.”), represented by Troutman Pepper, United States. Respondent is Taylor Samuel, INSIGHT GLOBAL, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2024. On August 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2024, 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 (“REDACTED FOR PRIVACY, INSIGHT GLOBAL”) and contact information in the Complaint. The Center sent an email communication to Complainant on August 23, 2024, 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 the same date. 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 August 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2024.
page 2 The Center appointed Richard W. Page as the sole panelist in this matter on September 25, 2024. 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 Background Complainant is a limited liability company under the laws of Delaware, United States, specializing in remote work staffing. Complainant owns service mark registrations for INSIGHT GLOBAL (the “INSIGHT GLOBAL Mark”) in the United States, including without limitation: United States Registration No. 3,630,697 INSIGHT GLOBAL A STAFFING SERVICES COMPANY registered June 2, 2009 in international class 35; and United States Registration No. 4,997,327 INSIGHTGLOBAL registered July 12, 2016 in international class 35. The Disputed Domain Name was registered on July 26, 2024 and resolves to a “Coming Soon” website which contains the Disputed Domain Name and a line at the bottom: We're under construction. Please check back for an update soon. 5. Parties’ Contentions A. Complainant Complainant contends that Respondent registered the Disputed Domain Name after Complainant’s service mark registrations for the INSIGHT GLOBAL Mark were a matter of public record. Complainant further contends that Respondent has no authorization from Complainant to use the INSIGHT GLOBAL Mark. The Disputed Domain Name simply adds the generic designation “remote” to the INSIGHT GLOBAL Mark. Complainant further contends that the INSIGHT GLOBAL Mark is distinctive and strong, having been in use for many years. It is neither descriptive nor generic with respect to any products or services. Respondent registered the Disputed Domain Name well after Complainant registered the INSIGHT GLOBAL Mark and well after Complainant began using the INSIGHT GLOBAL Mark. Respondent also chose the Disputed Domain Name which includes the entirety of the INSIGHT GLOBAL Mark. As such, Respondent intentionally chose the Disputed Domain Name to create confusion. Complainant further contends that the Disputed Domain Name uses the entirety of the INSIGHT GLOBAL Mark, with the addition of the term “remote” which does not defeat confusing similarity. Complainant alleges that Respondent owns no U.S. or international trademark or service mark applications or registrations for “INSIGHT GLOBAL,” or any variant of the Disputed Domain Name. Respondent has not commonly used the INSIGHT GLOBAL Mark prior to registration of the Disputed Domain Name. Complainant submits that the prior registration of the INSIGHT GLOBAL Mark, its distinctive and well-known presence in the market, and the inclusion of the entirety of the INSIGHT GLOBAL Mark in the Disputed Domain Name show actual and constructive knowledge of Complainant’s rights. Complainant further submits that it is inconceivable that Respondent came up with Disputed Domain Name on its own, and there is no plausible explanation other than Respondent’s intent to take advantage of confusing similarity with the INSIGHT GLOBAL Mark.
page 3 Complainant asserts that it has satisfied each of the three elements required under the Policy for a transfer of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the three essential elements are met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the INSIGHT GLOBAL Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar WIPO Overview 3.0, section 1.2.1 states that registration is prima facie evidence of Complainant having enforceable rights in the INSIGHT GLOBAL Mark. Complainant has shown rights in respect of the INSIGHT GLOBAL Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the INSIGHT GLOBAL Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. The entirety of the INSIGHT GLOBAL Mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the INSIGHT GLOBAL Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here the term “remote,” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the INSIGHT GLOBAL Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
page 4 (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 INSIGHT GLOBAL Mark. Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving Respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that the Disputed Domain Name was registered and used in bad faith, but other circumstances may be relevant in assessing whether Respondent’s registration and use of the Disputed Domain Name is in bad faith. WIPO Overview 3.0, section 3.2.1. Complainant has not based its allegations of bad faith on paragraph 4(b) of the Policy. Instead, it has asserted that Respondent had actual and constructive knowledge of Complainant’s rights, prior to registration of the Disputed Domain Name and on Respondent’s use of the entirety of the INSIGHT GLOBAL Mark in the Disputed Domain Name. WIPO Overview 3.0, section 3.2.2. Complainant further asserted that it is inconceivable Respondent came up with the Disputed Domain Name on its own, and there is no plausible explanation other than Respondent’s intent to take advantage of the Disputed Domain Name’s confusing similarity with the INSIGHT GLOBAL Mark. WIPO Overview 3.0, section 3.3. The Panel finds that Complainant has established the third element of the Policy.
page 5 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 Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: October 9, 2024
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