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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Proctor.IO Incorporated v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-2692

1. The Parties

The Complainant is Proctor.IO Incorporated, United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.

The Respondent is Registration Private, Domains by Proxy, LLC, United States/ Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <proctoro.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, 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 the Complainant on October 16, 2020, 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 October 21, 2020.

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 October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2020.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 18, 2020. 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

The Complainant is a technology company located in the state of Arizona in the United States offering state of the art technology in its highly sophisticated, fully automated proctoring software platform used to proctor the administration of tests and exams remotely.

The Complainant’s fully automated platform eliminates the need for human proctors and includes a number of advanced security features, including facial detection technology, ID verification, content protection, secure browser settings, computer lock down, originality authentication, plagiarism detection, and administrative and faculty controls.

The Complainant’s products are used by colleges and universities, corporations, and government agencies throughout the United States and internationally.

The Complainant operates its business and advertises and sells its products under the trademark PROCTORIO and has used and registered this trademark in connection with its software products and services in the United States and Europe (the “PROCTORIO Mark”).

The Complainant has used the PROCTORIO Mark in connection with its business and software products and services since at least as early as 2013. Since that time, the Complainant has expended extensive amounts of time, effort, and money in advertising and promoting its products and services under the PROCTORIO Mark. As a result, the Complainant has extensive statutory and common law trademark rights in the PROCTORIO Mark.

The Complainant’s PROCTORIO mark is registered in the United States and in Europe, as follows:

- In United States PROCTORIO mark is registered under no 5722338 from April 9, 2019 for Class 42: Software as a service (SAAS) services featuring software for secure exam proctoring and content protection, identification verification, and data analytics associated therewith; software as a service (SAAS) services featuring software for plagiarism detection;

- In Europe PROCTORIO mark is registered under No. 018034721 from July 31, 2019 for Class 42: Software as a service (SAAS) services featuring software for secure exam proctoring and content protection, identification verification, and data analytics associated therewith; software as a service (SAAS) services featuring software for plagiarism detection.

The Complainant also actively promotes and advertises its business and software products on its website at “www.proctorio.com”.

The owner of the disputed domain name used a privacy service to conceal its identity. After filling the initial Complaint, the Registrar provided the identity of the Respondent who is “Carolina Rodrigues from Fundacion Comercio Electronica” from Panama.

The disputed domain name was created on February 24, 2020, and was registered to this registrant since at least October 15, 2020, according to the response to the Request for Registrar Verification.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is nearly identical and is confusingly similar to the Complainant’s PROCTORIO mark as it only differs from the PROCTORIO Mark by one letter, by omitting the letter “I” from PROCTORIO mark. The Respondent’s use of a seemingly fanciful term (“PROCTORO”) with no clear English meaning, and with such close similarity to the Complainant’s fanciful PROCTORIO mark, is likely to create consumer confusion. The Complainant believes that the Respondent has specifically engaged in typo squatting and has chosen this misspelling of the Complainant’s PROCTORIO Mark in the hopes that consumers will inadvertently type this domain, rather than the Complainant’s legitimate domain name. Furthermore, the inclusion of “.com” in the disputed domain name is insufficient to remove the likelihood of confusion and should be ignored for purposes of this analysis.

- The Respondent cannot show use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant believes that the Respondent is a cyber-squatter who obtained the disputed domain name in bad faith. The Respondent’s website has been registered since February 24, 2020 (Annex 1), and in the seven months it has been registered, the Respondent has not used the domain name for any legitimate business purpose.

- The Complainant’s use of the PROCTORIO Mark as early as 2013 predates the Respondent’s registration of the disputed domain name by at least seven years. In addition, the Complainant’s trademark registrations were registered before the date of the Respondent’s registration of the disputed domain name. Further, the Complainant’s domain name was registered and in use at least seven years prior to the date of the Respondent’s registration of the disputed domain name.

- The Complainant enjoys exclusive rights in the PROCTORIO Mark and has never consented or authorized the Respondent’s registration of the disputed domain name, nor has the Complainant granted any propriety rights associated with the PROCTORIO Mark to the Respondent.

- Given the exclusive rights owned by the Complainant in the PROCTORIO Mark, the Respondent can have no rights or legitimate interests in the disputed domain name.

- Finally, the disputed domain name does not contain any content associated with a bona fide business. Rather, the Respondent, by previously knowing about the Complainant’s trademark, is attempting to profit from the goodwill associated with the Complainant’s PROCTORIO Mark by using a domain name that is confusingly similar to the PROCTORIO Mark, to take users to sites containing viruses and malware, and by displaying advertising links for goods and services that are identical or closely related to the Complainant’s goods and services. Such use is intended to attract Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant and its PROCTORIO Mark which is an indication that the disputed domain name was registered and is being used in bad faith.

- The disputed domain name either redirects to different URLs that contain viruses/malware, or displays advertising links related to such things “Automated Online Proctoring Services”, “Exam Prep Resources”, and “Exam Results Online”.

- The Complainant is aware of such malware use because a potential consumer brought it to their attention after a security scan.

- In addition to the above redirection of the disputed domain name to harmful virus/malware sites, the disputed domain name will also, at intermittent times, display links to sponsored or pay-per-click sites, which does not constitute fair use. The Respondent’s diversionary use of the disputed domain name to profit from consumers’ purchase of competitive products is not a legitimate commercial or fair use of the disputed domain name.

- The Respondent’s use is intended to lure users of the Complainant’s service into clicking on harmful links or to generate revenue for the Respondent by luring users into clicking on pay-per-click links. In either case, the use of the disputed domain name by the Respondent is harmful, in bad faith and intended to trade off the goodwill of the Complainant.

- The Respondent’s bad faith is further evidenced by the fact that the Respondent is a repeat cybersquatter with a history of registering domain names that are confusingly similar to many well-known brands. Since 2018, the Respondent has been involved in 92 domain name disputes, with 44 cases decided in 2020 alone. Similar to the facts of this case, many of the disputed domain names in these cases were nearly identical to famous brands and only differed by a letter or two.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the PROCTORIO Mark acquired through both use and registration.

According to the Complainant, the disputed domain name is nearly identical with the Complainant’s PROCTORIO Mark as it only differs from the PROCTORIO Mark by one letter, by omitting the letter “I” from PROCTORIO Mark. As the disputed domain name is “Proctoro”, with no clear English meaning, and with such close similarity to the Complainant’s PROCTORIO Mark, the Panel finds that the Respondent has specifically engaged in typosquatting and has chosen this misspelling of the Complainant’s PROCTORIO Mark in the hope that consumers will inadvertently type this domain, rather than the Complainant’s legitimate domain name.

Furthermore, the inclusion of the generic Top-Level-Domain (“gTLD”) “.com” in the disputed domain name should be ignored for purposes of this analysis.

It is a long established UDRP practice (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) according to which a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. Such a conclusion stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark, which is the case of the disputed domain name “Protoro” in relationship with the Complainant’s PROCTORIO Mark.

The Panel therefore finds that the disputed domain name is confusingly similar to the trademark and the first element under of paragraph 4(a) of the Policy is therefore established.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to the section 2.1 of the WIPO Overview 3.0.

In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. The Respondent’s website has been registered since February 24, 2020 and in the months it has been registered, the Respondent has not used the domain name for any legitimate business purpose.

Moreover, the Complainant’s use of the PROCTORIO Mark as early as 2013 predates the Respondent’s registration of the disputed domain by at least seven years. In addition, the Complainant’s trademark registrations described were registered before the date of the Respondent’s registration of the disputed domain name and the Complainant’s domain name was registered and in use at least seven years prior to the date of the Respondent’s registration of the disputed domain name.

From the evidence submitted, this Panel infers that the Complainant enjoys exclusive rights in the PROCTORIO Mark and has never consented or authorized the Respondent’s registration of the disputed domain name, nor has the Complainant granted any propriety rights associated with the PROCTORIO Mark to the Respondent.

Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name, and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

The Complainant contends different circumstances which the Panel considers relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name.

Such circumstances refer to the following facts documented by the Complainant, as follows:

- the Respondent could not show use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

- the disputed domain name either redirects to different URLs that contain viruses/malware, or display advertising links related to such things as “Automated Online Proctoring Services”, “Exam Prep Resources”, and “Exam Results Online” specific to the field of activity of the Complainant.

- in addition to the above redirect of the disputed domain name to harmful virus/malware sites, the disputed domain name will also, at intermittent times, display links to sponsored or pay-per-click sites, which does not constitute fair use and represents a diversionary use of the disputed domain name to profit from consumers’ purchase of competitive products.

The Respondent’s bad faith is further evidenced by the fact that the Respondent is a repeat cybersquatter with a history of registering domain names that are confusingly similar to many well-known brands.

Considering the contentions of the Complainant, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is therefore 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, <proctoro.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: December 2, 2020

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