DECISION

 

Nutramax Laboratories, Inc. v. Ugo / Onwutalu

Claim Number: FA2404002095481

 

PARTIES

Complainant is Nutramax Laboratories, Inc. ("Complainant"), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is Ugo / Onwutalu ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <provible.com>, registered with Sav.com, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 29, 2024; Forum received payment on April 29, 2024.

 

On April 30, 2024, Sav.com, LLC confirmed by e-mail to Forum that the <provible.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 May 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2024 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@provible.com. Also on May 1, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On May 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant's requested relief without deference to Policy ¶¶ 4(a)(ii) or 4(a)(iii), when a respondent consents to the requested relief. See Boehringer Ingelheim Int'l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) ("In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.") In the instant case, Respondent agrees to transfer the at-issue domain name to Complainant stating in its email response to Forum that "[t]he domain can be transferred to whichever relevant account details are provided." 

 

The Panel, noting that the parties agree to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA 613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a prerequisite to Complainant obtaining its requested relief —even where Respondent agrees to such relief— this Panel reasons that Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Notably, without requiring a prerequisite finding under paragraph 4(a)(i) a complainant lacking rights in an at-issue domain name might, via the UDRP, acquire a domain name from a respondent who also has no rights in such domain name.

 

Here, Complainant shows it has rights in its PROVIABLE mark through Complainant's registration of PROVIABLE with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).") Furthermore, the differences between <provible.com> and Complainant's trademark are insufficient to distinguish the <provible.com> domain name from Complainant's PROVIABLE trademark under Policy ¶ 4(a)(i) as the domain name contains a recognizable misspelling of Complainant's PROVIABLE trademark where the mark's letter "a" is omitted and the confusingly similarity irrelevant ".com" top-level is added. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, "Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.") Therefore, the Panel finds that <provible.com> is confusingly similar to Complainant's PROVIABLE trademark.

 

In light of Respondent's unequivocal consent to transfer the at-issue domain name to Complainant and the Panel's finding that Complainant has rights in a mark that is confusingly similar to the at-issue domain name, the Panel concludes that analysis regarding paragraph 4(a)(ii) and 4(a)(iii) of the Policy as well as a summary of Complainant's contentions are not warranted.

 

DECISION

Having established that the parties agree to the requested relief and that the at-issue domain name is confusingly similar to a trademark in which the Complainant has rights, the Panel finds that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <provible.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: May 22, 2024