Pruvit Ventures, Inc. v. Naibin Jiang
Claim Number: FA2305002043325
Complainant is Pruvit Ventures, Inc. ("Complainant"), United States, represented by Tory Cronin of Ferguson Braswell Fraser Kubasta, PC, Texas, United States. Respondent is Naibin Jiang ("Respondent"), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pruvit.shop>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 5, 2023; Forum received payment on May 5, 2023.
On May 5, 2023, Tucows Domains Inc. confirmed by email to Forum that the <pruvit.shop> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 May 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@pruvit.shop. Also on May 8, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a dietary and nutritional supplement company founded in 2015. Complainant states that it "is a worldwide leader in ketone technology and a pioneer in selling ketone products, which aid consumers in achieving ketosis." Complainant has used the PRÜVIT mark for dietary and nutritional supplements since 2015, and owns a United States trademark registration for PRÜVIT in standard character form. Complainant also owns trademark registrations for various secondary marks that it uses for specific products, including KETO//OS NAT, KETO//KREME, and MITO//PLEX.
The disputed domain name <pruvit.shop> was registered in June 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. Until recently the domain name was being used for a website entitled "Pruvit Ketone Shop" that offered for sale products purporting to be those offered by Complainant under its PRÜVIT mark and secondary marks, including "KETO/OS NAT Strawberry Peach," "KETO//KREME Sweet Kreme," and "Pruvit MITO//PLEX Upgraded Electrolytes." The website included images that Complainant alleges were copied from Complainant's website without permission. Respondent appears to have been identified on the website only as "Pruvit Ketone Shop," with no information clarifying Respondent's connection or lack of a connection to Complainant. In April 2023, Complainant's counsel sent a cease and desist letter to Respondent's registered agent in Sheridan, Wyoming, alleging trademark infringement and related claims. Respondent does not appear to have replied to the letter, although the Panel notes that the domain name no longer resolves. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and is not authorized to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <pruvit.shop> is legally identical and confusingly similar to its PRÜVIT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <pruvit.shop> corresponds to Complainant's registered PRÜVIT trademark, omitting the umlaut and appending the ".shop" top-level domain. The omission of a diacritical mark and the addition of a top-level domain are normally disregarded for purposes of assessing identicality or similarity under paragraph 4(a)(i) of the Policy. See, e.g., Pruvit Ventures, Inc. v. Feng Ye, FA 2043049 (Forum May 30, 2023) (finding <pruvithub.com> identical or confusingly similar to PRÜVIT); Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc., D2018-0757 (WIPO June 6, 2018) (finding <durr.shop> identical to DÜRR). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Its sole apparent use has been for a misleading website that attempted to pass off as Complainant to promote competing unauthorized and possibly counterfeit products. Respondent has not come forward with evidence of bona fide use, and based upon the information available to the Panel, it appears unlikely that Respondent's use of Complainant's PRÜVIT mark would qualify as a nominative fair use. See, e.g., Pruvit Ventures, Inc. v. Feng Ye, supra (finding lack of rights or interests in similar circumstances); Fair Isaac Corp. v. Andrew Loucks / Fico People LLC, FA 2018728 (Forum Dec. 6, 2022) (same); see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 2.8.1 (setting forth requirements for bona fide use, citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name corresponding to Complainant's registered mark, and used the domain name for a website that attempted to pass off as Complainant to promote competing unauthorized and possibly counterfeit products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Pruvit Ventures, Inc. v. Feng Ye, supra (finding bad faith registration and use in similar circumstances); Pendleton Woolen Mills, Inc. v. Wuyuzhen Wu, FA 2030941 (Forum Mar. 13, 2023) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pruvit.shop> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 5, 2023
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