The Complainant is Progrentis Corp, Panama, represented by Furr Law Firm, United States of America.
The Respondent is Xiang Yan, Yan Xiang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 27, 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 January 1, 2022.
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 January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2022.
The Center appointed Daniel Peña as the sole panelist in this matter on February 2, 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 provides educational online services since 2012.
The Complainant has obtained Spanish Trademark registration PROGRENTIS M3505533, registered on September 25, 2014 for services in International class 41, for educational services.
The disputed domain name was registered on March 24, 2021. According to the evidence in the Complaint, the disputed domain name resolves to a pornographic website in Chinese.
5. Parties’ Contentions A. ComplainantThe Complainant is one of the world leaders in providing educational services as the first cloud solution, developed with neuro feedback, created to learn how to learn.
The Complainant has developed a powerful and active website using the trademark PROGRENTIS since 2012.
The Complainant has used the domain name
The Complainant has devoted countless hours and resources to develop and promote the webpage “www.progrentis.com”.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark PROGRENTIS as the disputed domain name incorporates the entirety of the trademark. The inclusion of the term “www” is not sufficient to overcome the confusing similarity with respect to the Complainant’s PROGRENTIS trademark.
The Complainant indicated that the Respondent has no rights to or legitimate interests in respect of the disputed domain name based on the Complainant’s prior use of its trademark PROGRENTIS. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the PROGRENTIS mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark.
The Complainant indicated that the Respondent has intentionally registered and is using the disputed domain name in bad faith, the latter based on the composition of the disputed domain name, that the Respondent chose to register a name that is confusingly similar to the Complainant’s trademark and that the Respondent was fully aware of the fact that they incorporated well recognized and distinctive trademarks in which the Respondent had no prior rights.
The Complainant argued that the Respondent’s registration and use of the disputed domain name incorporating the Complainant’s mark indicates a deliberate attempt to confuse Internet users into believing that this site is associated with, authorized by, or connected to the Complainant for commercial gain. The foregoing is evidenced by the pornographic content that the Respondent links to the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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.
Considering these requirements, the Panel rules as follows:
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademark PROGRENTIS on the basis of its trademark registration in Spain. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. Numerous UDRP panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the expression “www” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent a finding of confusing similarity either. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element”. Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks in accordance with the well-established practice of previous UDRP panels (see also WIPO Overview 3.0, section 1.11).
Therefore, the Panel holds that the combination of the term “www” which usually identifies the World Wide Web together with the Complainant’s trademark PROGRENTIS and the applicable gTLD “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s PROGRENTIS mark, which remains clearly recognizable in the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIn accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name, since the Respondent is an individual with no apparent connection with the PROGRENTIS trademark.
The Panel concludes that the Respondent deliberately chose to include the Complainant’s PROGRENTIS trademark in the disputed domain name, in order to achieve commercial gain by misleading third parties, and that such use cannot be considered as a legitimate noncommercial or fair use. The Panel finds that the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Given the above, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its distinctive PROGRENTIS trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the PROGRENTIS mark at the time the disputed domain name was registered. Bad faith can be presumed based on the widely evidenced recognition of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto. For the Panel, the bad faith in the use of the disputed domain name is also evidenced by the pornographic content that the Respondent links to the disputed domain name.
The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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
Daniel Peña
Sole Panelist
Date: February 16, 2022