Insight Global, LLC v Clement Odongo, Core Insight LLC

WIPO Case No. D2024-2630

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Insight Global, LLC v. Clement Odongo, Core Insight LLC

Case No. D2024-2630

1. The Parties

Complainant is Insight Global, LLC, United States of America (“United States”), represented by Troutman

Pepper, United States.

Respondent is Clement Odongo, Core Insight LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <coreinsightglobal.com> 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 June 26, 2024. connection with the disputed domain name. On June 27, 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 (Core Insight LLC, Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on July 2, 2024, 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 July 2, 2024.

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 July 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2024.

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The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 14, 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, Insight Global, LLC, is a recruiting and staffing company. Complainant finds and places candidates for jobs on behalf of companies across diverse industries and functions. Complainant owns and uses the name and mark INSIGHT GLOBAL for its services and owns three trademark registrations in the United States. These include a registration for (i) INSIGHT GLOBAL A STAFFING SERVICES COMPANY & Design (Registration No. 3,630,697) which issued to registration on June 2, 2009 and which disclaimed the words “global” and “a staffing services company”; (ii) INSIGHTGLOBAL & Design (Registration No. 4,997,327) which issued to registration on July 12, 2016; and INSIGHT GLOBAL UNIVERSITY (Registration No. 6,225,338) which issued to registration on December 22, 2020 and which disclaimed the words “global university”. Complainant also owns and uses the domain name <insightglobal.com> to provide information concerning Complainant and its services.

Respondent who appears to be based in the United States registered the disputed domain name on May 11, 2024. The disputed domain name has not resolved to an active website or page apart from a parked page that includes a reference to the disputed domain name and the legend “We’re under construction. Please check back for an update soon.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

In particular, Complainant contends that its INSIGHT GLOBAL mark is a distinctive and strong mark on account of it being used by Complainant for many years for its staffing services. Complainant further contends that the disputed domain name is confusingly similar to the INSIGHT GLOBAL mark as it fully consists of the INSIGHT GLOBAL mark with the “descriptive designator ‘core’.”

Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name long after Complainant registered the INSIGHT GLOBAL mark in the United States, (ii) is not a licensee of Complainant and has not been authorized to use the INSIGHT GLOBAL mark, and (iii) has not made any use of the disputed domain name.

Lastly, Complainant asserts that Respondent has acted in bad faith by knowingly registering the disputed domain name that is “an exact reproduction of the Complainant’s unique and inherently distinctive mark. Complainant maintains “that it is unlikely that Respondent divined the phrase ‘Insight Global’ on its own.” Complainant also argues that given the foregoing contentions, in combination with Respondent’s lack of legitimate interests or rights in the disputed domain name, there is no plausible circumstance under which

Respondent could legitimately register or use the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

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 Complainant’s trademark and the disputed domain name. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

WIPO Overview 3.0, section 1.8.

Here, Complainant has shown rights in its INSIGHT GLOBAL mark for purposes of the Policy. Complainant’s INSIGHT GLOBAL mark, for purposes of the first element, as the INSIGHT GLOBAL mark is clearly recognizable at the tail of the disputed domain name. Although the addition of other terms, here the word “core,” may bear on the assessment of the second and third elements, the Panel finds the addition of such word does not prevent a finding of confusing similarity between the disputed domain name and the mark for purposes of the Policy.

The first element of the Policy has thus been established by Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Here, while Complainant has shown that it owns rights in the INSIGHT GLOBAL mark in connection with staffing services, the Panel has reservations regarding the scope of those rights. Two of Complainant’s trademark registrations specifically disclaim the word “global” and Complainant’s third trademark registration

is for INSIGHTGLOBAL as one word with a design element. In addition, while Complainant maintains that INSIGHT GLOBAL “is a distinctive and strong” mark, Complainant has provided limited evidence in support of such a claim. Apart from printouts from Complainant’s current website, Complainant has only provided a single one page printout from a subpage within a website at “ that includes a
sentence in a three line paragraph under the banner INSIGHT stating that Complainant is one of the three
largest IT staffing firms in the United States.

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In all, based on the evidence submitted by Complainant, the Panel is willing to accept that Complainant is known in the staffing industry and even for IT staffing. The Panel, however, is not prepared to find that Complainant’s rights in INSIGHT GLOBAL extend much beyond Complainant’s staffing services or are so broad as to cover uses of the words “insight” and/or “global” for unrelated services.

Here, while Respondent has not appeared in this proceeding to justify its registration or use of the disputed domain name, there is no evidence of use of the disputed domain name by Respondent since its registration apart from an “under construction page.” Complainant did, however, provide a LinkedIn page for an entity called “Core Insight LLC” that Complainant maintains is Respondent’s LinkedIn page. That page is very limited and simply states that Core Insight LLC has experience in “Information Technology” and includes the statement “Information Technology at Core Insight LLC.”

What services are actually provided by Core Insight is not clear as these could conceivably be actual technology.
information technology services, such as managing, creating or accessing business processes and
information for others, or perhaps IT staffing services. Notably, there is no use of the world “global” on the
LinkedIn page and no reference to IT staffing. It should also be noted that the LinkedIn page is simply for
Core Insight. Thus, from the LinkedIn page the actual comparison to be drawn is between Complainant’s

That the disputed domain name adds the word “global” after “Core Insight,” a word that Complainant has twice disclaimed, does create an issue. Whether that use is meant to invoke Complainant and its services is uncertain, particularly as there is no current use of the disputed domain name. The disputed domain name could either be seen as a clever way to invoke or imply an affiliation with Complainant’s INSIGHT GLOBAL name and mark with the addition of the word “core” at the head of the disputed domain name, as Complainant suggests, or the addition of the word “global” after “Core Insight,” the name of Respondent’s apparent company, might have been done to suggest an international presence for the “Core Insight” business.

As Respondent has not appeared in this proceeding to defend its actions, and given that Complainant has established its rights in INSIGHT GLOBAL in relation to its staffing services, the Panel is willing to accept that Respondent may not have a legitimate interest in the disputed domain name as the disputed domain name could arguably be seen as implying an affiliation to Complainant and its staffing services. As such the

Panel narrowly finds for Complainant on the second element.

C. Registered and Used in Bad Faith

For purposes of the third element, a complainant needs to prove the conjunctive requirement of bad faith registration and use. Policy, Paragraph 4(a)(iii).

Here, Complainant’s case is essentially based on the notion that Complainant’s INSIGHT GLOBAL mark is strong, unique, and inherently distinctive, a proposition that is not established by the evidence submitted given the disclaimers in Complainant’s trademark registrations and the limited evidence concerning the notoriety of Complainant’s mark. To be sure there is no evidence in the record that Respondent chose to specifically target Complainant and its staffing services by using the disputed domain name to offer competing staffing services, to offer the disputed domain name for sale, or for a fraudulent purpose. Respondent has made no use of the disputed domain name. Moreover, the LinkedIn page submitted by Complainant does not establish that the use of Core Insight is being done to take advantage of Complainant’s claimed rights in INSIGHT GLOBAL per se.

While Panels have found that the non-use of a domain name, including a blank or “coming soon” page,
would not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section
3.3), an argument not raised by Complainant, such is unavailing here. Apart from the fact that this
proceeding was commenced only slightly more than a month after the disputed domain name was
registered, Complainant has not established the distinctiveness of Complainant’s INSIGHT GLOBAL mark or

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the scope or extent of its reputation. Indeed, a simple search on Google and in the United States Patent and
Trademark Office database shows a number of third party names and marks that consist of “insight” and

“global,” thus suggesting that these terms are not unique to Complainant.

But more telling is Complainant’s claim that INSIGHT GLOBAL is a strong mark without ever addressing the no weight and the one page printout that Complainant submitted does not establish that the INSIGHT GLOBAL mark is a strong mark. Simply put while the Panel has been willing to accept that Complainant likely has rights in INSIGHT GLOBAL in the staffing industry, the strength of those rights appear limited from the evidence provided.

fact that two of its registrations disclaim the word “global” and that Complainant’s two primary registrations
for INSIGHT GLOBAL are as part of a design mark. Complainant has also not established the strength and
scope of Complainant’s rights in INSIGHT GLOBAL with the type of evidence that would be expected when a

What is lacking in this proceeding is evidence showing that it is more likely than not that Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark. Indeed, it is worth reiterating that there is no evidence that directly shows that the disputed domain name was registered and used to take advantage of Complainant’s claimed rights. The Respondent’s LinkedIn page provided by Complainant, for example, does not establish that the disputed domain name was registered to take

advantage of Complainant’s claimed rights in bad faith, particularly as the page is for an alleged Core Insight
LLC entity and there are no references to IT staffing or uses of the word “global.”

At most, this may be more of trademark claim than a cybersquatting situation. To the extent that Complainant believes it may have a claim against Respondent for trademark infringement or unfair competition based on Respondent’s registration and use of the disputed domain name, such a claim belongs in another forum and is beyond the scope of this UDRP proceeding. Here, however, as it has not been established by Complainant that Respondent registered and used the disputed domain name in bad faith, Complainant’s complaint fails on third element.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Georges Nahitchevansky/
Georges Nahitchevansky
Sole Panelist
Date: August 28, 2024