Oura Health Oy v. Ilya Borisov
Claim Number: FA2307002055574
Complainant is Oura Health Oy (“Complainant”), represented by Tara Hawkes of Holland & Hart LLP, Colorado, USA. Respondent is Ilya Borisov (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oura-th.com>, registered with Dynadot 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on July 31, 2023; Forum received payment on July 31, 2023.
On August 1, 2023, Dynadot Inc confirmed by e-mail to Forum that the <oura-th.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the English language Dynadot 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 August 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2023 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@oura-th.com. Also on August 7, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.
Complainant is a Finnish technology company that provides products and services to help its customers improve and maintain their health and wellness, in particular the famous Oura Ring made and sold under the OURA mark. Complainant has rights in the OURA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 6161009, Sept. 29, 2020). See Compl. Exhibit 3. Respondent’s <oura-th.com> domain name (hereinafter referred to as “the Disputed Domain Name”) is confusingly similar to Complainant’s mark as it consists of the OURA mark, with the addition of a hyphen and the letters “th” which is the country code for Thailand and recognized as such. It also includes the “.com” generic top-level domain (“gTLD”). The result of the use of the mark together with the above-mentioned additions is to convey the false impression that the domain name is in fact an official use of the OURA trademark incorporated into and reflected in the domain name and that the domain name is thus an official domain name of the Complainant relating to its activities in Thailand.
Respondent has no rights and legitimate interests in the Disputed Domain Name. There is no evidence that Respondent is commonly known by the disputed domain name, nor that Complainant has authorized or licensed Respondent to use a domain name that is confusingly similar to the Complainant’s OURA mark. Moreover, on the evidence, Respondent has not used the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. That is because Respondent has registered and used the domain name to pass itself off as the Complainant, mislead internet users, trick them into thinking they are buying a genuine OURA product when they clearly are not and extract personal and financial information from them for a dishonest purpose.
Respondent registered and uses the Disputed Domain Name in bad faith. Respondent has used the Disputed Domain Name for a website to pass itself off as a legitimate OURA website of Complainant. All of the other circumstances show Respondent’s bad faith registration and use of the domain name. Respondent was fully aware of and had actual knowledge of the Complainant when it registered and used the domain name and its mimicry of the resolving website of the Complainant shows an intent to register the domain name to impersonate Complainant and capitalize on its goodwill associated with the OURA mark. Likewise, Respondent’s obvious intention to copy the Complainant’s trademark and alter it for the purpose of using it in the domain name and to use the domain name in an illegal manner, shows Respondent’s bad faith. Respondent’s actions have done and will do damage to Complainant’s goodwill and reputation in the OURA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Finnish technology company that provides products and services to help its customers improve and maintain their health and wellness, in particular the famous Oura Ring made and sold under the OURA mark.
2. Complainant has established its rights in the OURA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 6161009, Sept. 29, 2020).
3. Respondent registered the domain name <oura-th.com> (“the disputed domain name”) on May 19, 2023.
4. Respondent has registered and used the domain name to pass itself off as the Complainant, mislead internet users, trick them into thinking they are buying a genuine OURA product when they clearly are not and extract personal and financial information from them.
5. The evidence shows that the disputed domain name is confusingly similar to the OURA mark, that Respondent has no rights or legitimate interests in it and that Respondent has registered and used it 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 and 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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has established its rights in the OURA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 6161009, Sept. 29, 2020). See Compl. Exhibit 3. The Complainant also has many other registrations for the OURA mark throughout the world. Registration of a mark with the USPTO is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has registered and has established its rights in the OURA mark through its registration of the mark, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the Disputed Domain Name is identical or confusingly similar to Complainant’s OURA mark. Complainant argues that Respondent’s Disputed Domain Name is confusingly similar to Complainant’s OURA mark. Under Policy ¶ 4(a)(i), altering a mark and/or making additions to it, which has been done in the present case, along with using the “.com” gTLD, are insufficient to differentiate the domain name from the mark and therefore support the submission that the domain name is confusingly similar to the trademark in question. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Disputed Domain Name incorporates Complainant’s mark while adding a hyphen and the letters “th” which are the country code for Thailand and adds the “.com” gTLD. The domain name is <oura-th.com>, the trademark is OURA and the hyphen and the letters “th” have simply been added to the trademark. It is therefore similar to the trademark and confusingly so, as it gives the impression that the domain name is an official domain name of the Complainant designed to be used in its official activities in Thailand.
The Panel therefore finds that Respondent’s domain name <oura-th.com> is confusingly similar to Complainant’s OURA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OURA mark and to use it in its <oura-th.com> domain name, adding a hyphen and the letters “th” which do not negate the confusing similarity between the domain name and the mark, and which generate the impression that it is referring to and invoking the OURA mark.
(b) Respondent registered the disputed domain name on May 19, 2023.
(c) Respondent has caused the disputed domain name to resolve to a website, typosquatted on Complainant’s trademark and official domain name, depicted the Complainant’s OURA marks, O Mark, the Oura Ring and details thereof, pass itself off as the Complainant, use the Complainant’s copyright material and trick internet users into believing that they may buy the products of the Complainant at a reduced price; it has also clearly embarked on an exercise of trying to obtain personal and financial information of internet users.
(d) Respondent has engaged in these activities without the consent or approval of Complainant.
(e) Complainant also argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its mark in the dispute domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information in the present case identifies Respondent as Ilya Borisov of Lange Houtstraat 1-5, Den Haag, 2511, NL See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
(f) The evidence is that Complainant has not authorized Respondent to use a confusingly similar domain name, which Respondent has done and it therefore shows that Respondent is not affiliated with Complainant. Thus, if Respondent were to offer any services under the OURA trademark, such a use would be illegitimate and not bona fide.
(g) The evidence is also to the effect that Respondent has failed to use the disputed domain name for a bona fide offering of goods or services but has used it to trick internet users into providing personal and financial information by offering a purported “Buy Oura” form to purchase an Oura Ring.
(h) The evidence is also to the effect that Respondent uses the disputed domain name for a website to pass itself off as a legitimate OURA website.
(i) Respondent’s actions are clearly not a bona fide offering of goods or services and nor is Respondent engaged in a legitimate non-commercial or fair use of the domain name. In fact, the Respondent is perpetrating a fraud.
(j) Complainant has cited several prior UDRP decisions that support the foregoing contentions.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Respondent was passing itself off as a legitimate Oura website, and the Respondent therefore must have registered the domain name intending to impersonate the Complainant and capitalize on the goodwill associated with Complainant’s OURA mark. Moreover, it clearly wanted to give internet users the impression that they had found a legitimate platform associated with the Complainant, whereas in fact they had only found a fraudulent website.
Secondly, the OURA mark has worldwide fame and the Respondent was therefore aiming at a company and its trademark of which it had actual knowledge.
Thirdly, the registration of the domain name in this case, where the Respondent obviously had actual knowledge of the Complainant, was in bad faith because it is confusingly similar to the Complainant’s OURA mark.
Fourthly, the basic evil of what the Respondent has been doing should not be overlooked. It has been perpetrating a fraudulent scheme to dupe unsuspecting internet users into providing the Respondent with their personal and financial data to purchase an overpriced Oura Ring and that must be bad faith from the time of registration of the domain name and through its use.
All of this must damage the Complainant’s goodwill and reputation.
Accordingly, the Panel finds on the evidence that the Respondent has registered and used the domain name in bad faith in breach of Paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy and also the generally accepted meaning of bad faith.
Complainant has cited several prior UDRP decisions that support the foregoing contentions.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oura-th.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
September 4, 2023
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