The Complainant is Life Spectacular, Inc., United States of America, represented by K&G Law LLC, United States of America.
The Respondent is Contact Privacy Inc. Customer 12411422794, Canada / Ravi Kumar, Dreadnought School, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 the Complainant on November 25, 2021, 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 November 29, 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit a formal response but has sent three emails to the Center and to the Complainant, see below in section 5B.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 10, 2022. 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 BackgroundThe Complainant, Life Spectacular, Inc., dba Proven (“Proven”), was incorporated in 2017 to address the needs of individuals seeking personalized and effective skincare products. The company employs a comprehensive skincare database featuring over 20,000 ingredients, data from over 4,000 scientific publications, information about over 100,000 skincare products, and millions of testimonials. The SKIN GENOME PROJECT database also analyzes water hardness, humidity, and UV index for the customer’s location.
The Complainant is the owner of a number of United States trademark registrations and applications including United States trademark registration No. 88131406 of the device mark PROVEN applied on September 25, 2018 and registered on May 7, 2019 for goods in class 3.
The Complainant also owns the domain name
The disputed domain name was registered on November 1, 2021. At the time when the initial Complaint was filed the disputed domain name resolved to an active website, which appeared to offer information and services that were identical to those offered by the Complainant which had copied all of the text and many of the images from the Complainant’s website, “www.provenskincare.com”. The disputed domain name is currently not used for an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the disputed domain name is confusingly similar to its PROVEN mark. The disputed domain name consists of the Complainant’s exact mark with the addition of the descriptive terms “the” as prefix and “skin” as suffix, which do not differentiate the name from the Complainant’s mark; rather, these words strengthen the connection between the disputed domain name and the PROVEN skincare brand.
The Complainant further asserts that the Respondent has no legitimate interest in or legitimate, bona fide business purpose for using the disputed domain name
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Complainant’s mark is well-known, and the incorporation of a well-known trademark into a domain name by a registrant with no plausible explanation for the usage is thus an indication of bad faith. The Respondent has used the disputed domain name for a website which had copied the text and other elements from the Complainant’s website and the Respondent is thereby trading on the goodwill of the PROVEN trademark to attract users to the Respondent’s site for commercial gain.
B. RespondentAs mentioned above in section 3 the Respondent did not file a reply to the Complainant’s contentions but the Respondent contacted the Center three times during the proceeding.
In an email of November 26, 2021, the Respondent sent an email to the Complainant and Center with the following content:
“Hi,
I do not understand what this complaint is about.
Till I understand, how can I respond?”
After having received a copy of the amended Complaint but before the formal notification from the Center, the Respondent sent an email to the Complainant and Center with the following content:
“Thanks for your email!
I have removed the content of the website so your trademark and copyright is protected.
Hope everyone has a great day.”
On December 8, 2021, the Respondent sent an email to the Center stating:
“Hi,
I bought the domain name because it was available and I am going to use it to earn my livelihood. I have already removed any content which could cause copyright infringement.
If you force me to cancel the domain name or transfer the domain name then there is something fundamentally wrong with how domain names are sold.
Companies which are claiming copyright should purchase all domain names which they think are connected to them so such problems do not happen.
If the complainant didn’t think to claim ownership when the domain name was available for them to buy for the last 4 years then the company lacks the business foresight. Companies cannot wake up suddenly and say I should own this domain.
It should not lead to arm twisting of people like me who can’t afford to hire a lawyer.
For settlement I request WIPO that they ask the complainant to buy the domain name from me for an amount of USD 100,000/- to reimburse me for the loss of potential livelihood and all the effort I had put so far.
Just going through the emotional trauma of me losing my business and months of effort has caused me health problems of migraine and hypertension.
I request the members of WIPO board to consider my humble request.
Thanks so much!”
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark PROVEN, since the disputed domain name contains this mark in its entirety together with the words “the” and “skin”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such they are generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate InterestsIt is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark PROVEN.
Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. Furthermore, the way the Respondent has used the disputed domain name, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the distinctive nature of the PROVEN trademark and the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith.
It is equally obvious to the Panel that the disputed domain name has been used in bad faith in order to intentionally attempt “to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website”. The fact that the disputed domain name is currently inactivated does not alter this finding.
Noting that the Respondent has not substantively replied to the Complainant’s contentions but offered to sell the disputed domain name at a high price in his last email communication; and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
7. DecisionFor 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
Knud Wallberg
Sole Panelist
Date: January 23, 2022