Protivity.com

The timeline behind protivity.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Protiviti Inc. v. Manager, Webserv c/o webserv LLC Claim Number: FA0505000471955 PARTIES Complainant is Protiviti Inc. (“Complainant”), represented by Andrew Baum of Darby & Darby P.C. 805 Third Avenue, New York, NY, 10022. Respondent is Manager, Webserv c/o webserv LLC (“Respondent”), 8 Copthall, Roseau, Roseau, 00152 Dominica. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <protivity.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically May 4, 2005; the National Arbitration Forum received a hard copy of the Complaint May 4, 2005. On May 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <protivity.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 2005, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@protivity.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <protivity.com>, is confusingly similar to Complainant’s PROTIVITI mark. 2. Respondent has no rights to or legitimate interests in the <protivity.com> domain name. 3. Respondent registered and used the <protivity.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Protiviti Inc., is a Delaware corporation, which is a leading international provider of independent internal audit and business and technology risk consulting services. Complainant employs some 1,500 staff members in nearly 50 offices throughout Asia, Europe, Australia, Latin America and North America. Complainant’s revenue for fiscal years 2003 and 2004 exceeded $485 million. Complainant has used the PROTIVITI mark in commerce since 2002 and has expended an enormous amount of time, effort and money in promoting its PROTIVITI mark world-wide. Complainant registered the PROTIVITI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,741,346 issued July 29, 2003). Respondent registered the <protivity.com> domain name January 2, 1997. Respondent’s domain name resolves to a website featuring links to competing goods and services. DISCUSSION 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." 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires Complainant to 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. Identical to and/or Confusingly Similar Respondent’s registration of the disputed domain name predates by several years any use of the PROTIVITI mark by Complainant. Thus, the Panel holds that Complainant has not satisfied Policy ¶ 4(a)(i) because Complainant’s initial use of the mark does not predate Respondent’s registration of the disputed domain name. See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration of the domain name”). Since Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the Policy. See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary). DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the petition for relief shall be DENIED. Hon. Carolyn Marks Johnson, Panelist Dated: June 21, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.