KeyView Labs, Inc. v. Sunil Rai
Claim Number: FA1510001644014
Complainant is KeyView Labs, Inc. (“Complainant”), represented by Robert H. Thornburg of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Florida, USA. Respondent is Sunil Rai (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proceraavht.com> ('the Domain Name'), registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2015; the Forum received payment on October 26, 2015.
On October 27, 2015, NameSilo, LLC confirmed by e-mail to the Forum that the <proceraavht.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@proceraavht.com. Also on November 2, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 3, 2015.
Additional Submission of the Complainant compliant with Supplemental Rule 7, was received November 9, 2015.
Additional Submission of the Respondent compliant with Supplemental Rule 7, was received November 16, 2015
On November 9, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's contentions can be summarised as follows:
Complainant is the developer, manufacturer, promoter and seller of a dietary supplement known as PROCERA AVH which has through extensive advertisement become one of the most well-known and highly acclaimed cognitive enhancing supplements on the market.
Complainant owns US trade marks for PROCERA AVH for dietary supplements with first use in commerce recorded as 2005 as well as domain name registrations for proceraavh.com and procerahealth.com.
Respondent registered the Domain Name without authority from Complainant on or about December 14, 2013, merely adding a 't' to the back of Complainant’s domain name and PROCERA AVH mark.
Respondent made use of a privacy service and attempts to contact Respondent through its web site contact page were unsuccessful.
The Domain Name incorporates Complainant’s registered rights to the mark PROCERA AVH and is focussed on the sale of PROCERA AVH branded supplements or a competing product called Geniux for the purpose of Respondent's own pecuniary gain.
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by it and its use of it is not in connection with a bona fide offering of authorised dietary supplements, nor is it fair.
Respondent is not authorised to sell Complainant’s dietary supplement and Complainant has never given Respondent permission to use the mark PROCERA AVH. Respondent is using the Domain Name to sell Complainant’s supplements or potentially counterfeit or grey market copies of such goods. In addition, Respondent's web site contains various links to other third party supplements which purport to promote cognitive performance as well as curb memory loss which means Respondent's site amounts to a link farm such that customers interested in Complainant’s goods are instead taken to a site to order the goods of a competitor of the Complainant Geniux. This is not bona fide use.
Respondent registered the Domain Name for financial gain including the sale of counterfeits or grey market versions of Complainant's dietary supplement and use for links to competitors of Complainant. Such activities are bad faith under the Policy.
Respondent failed to respond to cease and desist communications from Complainant.
B. Respondent
Respondent's contentions can be summarised as follows:
The Domain Name is similar to Complainant's domain name proceraavh.com. Complainant itself has adopted to go with CPA networks to find affiliates for its promotion, so itself uses a third party to promote its product.
The Domain Name only has one post dedicated to review Complainant’s product so users can take an informed decision on it. Users can also find general information on memory related issues from Respondent's site. The site is not dedicated to PROCERA AVH alone.
Respondent has the right to hold the Domain Name because Complainant made a decision to promote its product via affiliate networks and, in turn, get affiliates who would promote it.
The site provides valuable articles on memory related issues to users, getting approximately 200 visitors a day. Respondent has invested time and money developing the site only because Complainant chose to promote its product via affiliates. As such Complainant itself has granted rights for such promotion.
Users can choose PROCERA AVH or any other product on Respondent's site. Complainant sells its products through Amazon which has links to other products.
If registering a domain name for review of a product is bad faith then promotion of PROCERA AVH by the company through affiliate networks is also unethical because it first encourages affiliates to promote the product then seeks to take control of the site once developed.
Complainant itself has used deceptive practices to sell its product which is clear from a press article.
Respondent sold PROCERA AVH through an affiliate link at Amazon and Complainant has listed PROCERA products for sale at amazon.com and thereby granted affiliates the right to promote its product. However Complainant later removed the product from Amazon so the affiliate link on Respondent's site leading to Amazon is no longer useful.
C. Additional Submissions
Complainant’s Additional Submissions can be summarised as follows:
The Response fails to contradict the strength of Complainant’s rights in the PROCERA AVH mark or its notoriety and admits the Domain Name wholly incorporates it and admits similarity. In fact Respondent's argument that his site contains general information instead supports a finding of confusing similarity.
Respondent fails to make any argument that he maintains legitimate rights to use PROCERA or PROCERA AVH. The Domain Name was registered 5 years after the Complainant obtained its PROCERA AVH trade mark registration.
Respondent does not suggest an absence of knowledge about the rights to the PROCERA or PROCERA AVH marks but instead seems to confirm such knowledge prior to the registration of the Domain Name and that it was chosen to drive traffic to Respondent's web site.
Arguments based on the premise that ‘others infringe intellectual property rights so why can't I?’ have never been found to create legitimate rights under the Policy.
Respondent admits he used the Domain Name to provide links to his products through Amazon. Selling goods in direct competition with the underlying mark holder fails to create any bona fide offering of goods under the Policy and instead factors towards transfer.
Respondent does not dispute he is using the site attached to the Domain Name as a link farm. Selecting a well-known trade mark for the purposes of driving traffic to a competing web site to sell similar goods supports a finding of bad faith registration.
Respondent’s Additional Submissions can be summarised as follows:
Use of a domain name proxy to mask the identity of a service is used to prevent WhoIs record crawling software from harvesting e mails for spamming purposes.
Respondent's site has a 'Contact Us' Page so anyone can contact the Respondent. Users can also leave comments on posts on Respondent's web site. Not using these simple methods to contact the Respondent made the case more complex and repudiates the claim that there was an effort to resolve matters before the Complaint. Respondent does not have the contact details of the CEO of Complainant to attempt to resolve matters, only the details of a legal team, which suggests Complainant is not interested in resolving matters and just wants to grab Respondent's domain.
Respondent has nowhere indicated it is known by Complainant’s marks. Nor has it claimed the status of an official site. An average internet user is educated enough to tell the difference between a review site and an official site. There are no native ordering or billing options on the Respondent's site which clearly proves it is an affiliate site and not an official site.
Respondent's web site gets commission by linking to PROCERA and other products and it is clear it is not an official site.
Respondent was familiar with PROCERA AVH before the registration of the Domain Name but Complainant has incentivized affiliate marketeers like Respondent to promote its product.
Complainant was aggressive in promoting its product including using CPA networks as a platform to recruit affiliates for its promotion.
The FTC has fined Complainant for making false claims as to its products efficacy in its marketing.
There are other third parties using PROCERA in domain names but Complainant is targeting Respondent as it has ranking on the first page of search engines
Complainant has provided monetary incentives to affiliates and runs its business for profit as does Complainant’s lawyers, but they now accuse Respondent of seeking financial gain. Respondent admits it made the web site for financial gain. Respondent is ready to hand over the web site to Complainant if it will compensate Respondent for the efforts it has made in building the web site. However no interest in negotiation from Complainant shows they want to grab the Domain Name by misusing their financial status.
Regarding the concern on grey market products, Complainant could have contacted Respondent earlier before it was so high ranking in search engines and Complainant has provided incentives to other affiliate networks.
Complainant manufactures and sells a dietary supplement designed to improve cognitive function. It owns US trade marks for PROCERA AVH for dietary supplements with first use in commerce recorded as 2005 as well as domain name registrations for proceraavh.com and procerahealth.com.
Respondent registered the Domain Name on or about December 14, 2013. Respondent's web site provides information about Complainant's product including reviews under a heading 'Procera AVH the memory booster' and a picture of Complainant's product. The same page contains a link ‘How to improve memory click here' which leads to a page offering a product of a competitor of Complainant Geniux which offers to improve cognitive function.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent does not claim to be commonly known by the Domain Name. He has not produced any evidence of direct consent from Complainant for his activities, but argues that Complainant has encouraged activities of other third party affiliates to promote Complainant's product.
Currently, the web site attached to the Domain Name gives information about the Complainant's product and contains a link next to this information leading to a page which offers a third party product which competes with Complainant's product. Respondent does not explain, however, why he has used Complainant's trade mark in the Domain Name to offer competing third party products with no connection with Complainant in this way and does not appear to argue that he has any consent to use Complainant's trade mark to promote the products of Complainant’s competitors on Respondent's web site.
Previous panels have held that it is not a bona fide offering of goods and services or a legitimate non-commercial or fair use where a respondent uses a domain name to display links to products that directly compete with Complainant’s business. See Compania Mexicana de Aciacion, SA de CV v Bigfoot Ventures LLC, FA 1195961 (Nat Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods and services under Policy 4 (c) (i), nor a non-commercial or fair use under Policy 4 (c)(iii) when the web site resolving from the disputed domain name displayed links to travel products and services which directly compete with the Complainant’s business) . Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The web site attached to the Domain Name contains information about Complainant's product including reviews under a heading 'Procera AVH the memory booster' and a picture of Complainant’s product. The page offering information about Complainant’s product does not in the opinion of the Panel make it clear that there is no connection with Complainant and as such is confusing. Furthermore, the same page contains a prominent link 'How to improve memory click here' which leads to a page offering a product of a competitor of Complainant Geniux which offers to improve cognitive function.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <proceraavht.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<November 23, 2015>>
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