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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

InPro Corporation v. Registration Private, Domains By Proxy, LLC / Shirley Plummer

Case No. D2021-1052

1. The Parties

Complainant is InPro Corporation, United States of America (“United States”), represented by Reinhart Boerner Van Deuren s.c., United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Shirley Plummer, United States.

2. The Domain Name and Registrar

The disputed domain name <inprollc.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 April 7, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 April 8, 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 April 14, 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 April 15, 2021. The due date for Response was May 21, 2021. Respondent, through its attorneys, sent an email to the Center on May 14, 2021, acknowledging their participation in the proceeding. No Response was filed by Respondent or its attorneys and the Center notified the Parties about its commencement to Panel Appointment on May 25, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 26, 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 Background

Complainant, InPro Corporation, is a manufacturer and distributor of building materials such as door and wall protection products, privacy systems, expansion joint systems, washroom systems, commercial window treatments and architectural signage. Complainant owns and uses the mark INPRO in connection with its products and services and owns a number of registrations for the INPRO mark in the United States for such products, the earliest of which dates back to October 4, 2011 (Registration No. 4034132). Complainant has also owned and used since 1998 the domain name <inprocorp.com> in connection with a website promoting Complainant’s products.

Respondent is owner and principal of a company by the name of QubiSource LLC (“Qubisource”) which manufactures and distributes, inter alia, office furniture, portable walls, modular structures, shelving and storage, and lockers. QubiSource was originally organized under the name InPro LLC, a company that was incorporated by Respondent in Pennsylvania on November 28, 2015. InPro LLC changed its name to QubiSource in June 2020 after being contacted by Complainant.

The disputed domain name was registered by Respondent on November 28, 2015, and was subsequently used in connection with a website concerning and promoting the products and services of InPro LLC. After Complainant contacted Respondent in or about June 2020, the disputed domain name then began to redirect to a website at <quibisource.com>. The disputed domain name currently continues to redirect to the website at <qubisource.com>.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has strong rights in the INPRO name and mark, a coined term, by virtue of its use of the mark since 1995 and through is several trademark registrations for the INPRO mark.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s INPRO mark as it fully consists of the INPRO mark with the non-distinguishing business entity abbreviation “llc.”

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) never received approval or authorization from Complainant to use the name or mark INPRO in the disputed domain name or associated website, (ii) is not known by the INPRO trademark, (iii) registered and used the disputed domain name well after Complainant had established rights in the INPRO mark, and (iv) is using the disputed domain name to redirect web users to Respondent’s website at <qubisoft.com> in order to offer products that are similar or complimentary to those offered by Complainant.

Lastly, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith as Respondent registered and started using the disputed domain name well after Complainant had established rights in the INPRO mark and did so to confuse and attract consumers to Respondent’s website for purposes of offering competing products and services. Complainant also contends that Respondent acted in bad faith by trying to sell the disputed domain name to Complainant for USD 4,000, plus attorney’s fees and out pocket costs after being contacted by Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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 has been registered and is being used in bad faith.

Here, Respondent’s failure to respond to the Complaint, does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s failure to respond to the Complaint in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a trademark registrations for the INPRO mark in the United States that issued before Respondent, who is based in the United States, registered the disputed domain name.

With Complainant’s rights in the INPRO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s INPRO mark as the disputed domain name fully incorporates the INPRO mark. The addition of the descriptive corporate abbreviation “llc” (which stands for “limited liability company”) does not prevent a finding of confusing similarity, as the INPRO mark is clearly recognizable in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s INPRO mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Complainant has established that it owns rights in the name and mark INPRO and that it has used its INPRO mark in connection with its building materials. While Complainant maintains that it has common law rights in INPRO that date back to 1995, the Panel is not convinced that such is the case. Complainant certainly used INPRO as a trade name, but for years according to archival website pages submitted by Complainant the mark IPC was the primary mark of the company. Nevertheless, over the years use of INPRO became more prominent and by at least as early as February 2014 the INPRO mark became the flagship name and mark of Complainant for its products and services. Consequently, based on the evidence submitted by Complainant, none of which is contested by Respondent, it appears to the Panel that Complainant had developed some common law rights in the INPRO mark in connection with its products and services prior to when Respondent registered and started using the disputed domain name. Those common law rights were in addition to the rights Complainant enjoyed through its federal trademark registrations for INPRO that dated back to 2011.

Respondent has not filed a Response nor any evidence or arguments, although it is clear Respondent is aware of the proceeding as attorneys purporting to appear for Respondent sent an informal communication to the Center after the proceeding was initiated in which Respondent’ attorneys advised they would be filing a Response. Ultimately, no Response was ever filed on behalf of Respondent. Currently, Respondent continues to use the disputed domain name to redirect to the website at <qubisoft.com> that promotes the various products and services of Respondent’s company Qubisoft.

Given that Respondent has been aware of Complainant since at least June 2020, if not earlier (as discussed further below), it thus appears that Respondent is not using the disputed domain name for any legitimate or fair use purpose, but to attract web users to Respondent’s website with the aim of promoting the sales of Qubisoft’s competing products and services for the profit of Respondent

In sum, given that Complainant has established with sufficient evidence that it owns rights in the INPRO mark, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(iI) of the Policy.

C. Registered and Used in Bad Faith

Whether Respondent registered and is using the disputed domain name in bad faith is a more complicated issue. There is no doubt that Respondent is using the disputed domain name in bad faith to redirect web user’s to Respondent’s website at <qubisoft.com> to promote Respondent’s similar, complimentary and/or competing goods and services. The more difficult question is whether Respondent registered the disputed domain name in bad faith on November 28, 2015.

On the same day that Respondent registered the disputed domain name, Respondent also incorporated its company under the name InPro, LLC. While it may have been a coincidence that Respondent adopted the name InPro, LLC for its company which offers competing or closely related products and services in some of the same industries and to the same end users, it appears more likely than not based on the evidence provided by Complainant that Respondent was aware of Complainant and its INPRO mark, or at the very least was willfully blind to Complainant’s rights in INPRO, which could have been easily ascertained through a quick Internet search or a search of the United stated Patent and Trademark Office database. This does not appear to be a case where a party innocently adopted a similar name for unrelated goods or services, but a systematic adoption and use of what appears to be a name based on a coined term (at least based on the evidence before the Panel) that is identical to the mark used and registered by a competitor (i.e., Complainant).

The fact that Respondent (i) has chosen not to defend or explain its actions, despite being fully aware of the dispute and this proceeding, and (ii) immediately changed its name to QubiSoft in June 2020 after being contacted by Complainant, underscores that Respondent was more like than not aware that its actions were in violation of Complainant’s rights in the INPRO mark. The mere fact that Respondent originally incorporated its company under the name InPro, LLC does not in of itself provide a legitimate interest or shield Respondent from a finding of bad faith registration. To rule otherwise in a situation where Respondent adopted the identical mark of a competitor in order to provide similar or related goods and services, would essentially reward Respondent’s attempt to ride of the coattails of Complainant. Thus, in the absence of any explanation or evidence from Respondent, the Panel concludes that Respondent registered and used the disputed domain name in bad faith.

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 <inprollc.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: June 8, 2021

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