The Complainant is Purus Labs, Inc. of Dallas, Texas, United States of America ("United States"), represented by Anderson & Associates, United States.
The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam, self-represented.
The disputed domain name <puruslabs.com> is registered with April Sea Information Technology Corporation (the "Registrar").
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2017. On October 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2017, 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 October 27, 2017 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 October 27, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated October 25, 2017, stating that Vietnamese is the language of the registration agreement of the disputed domain name, on October 27, 2017, the Center sent a request in English and Vietnamese that the Parties submit their comments on the language of the proceeding. On October 27, 2017, the Complainant submitted its request for English to be the language of the proceeding. On November 1, 2017, the Respondent submitted its request in English for Vietnamese to be the language of the proceeding.
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 in English and Vietnamese, and the proceedings commenced on November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Parties on November 22, 2017, that it would proceed to panel appointment.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 29, 2017. 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.
On December 12, 2017, the Panel issued Panel Order No. 1 pursuant to paragraph 12 of the Rules in order to clarify an issue arising from the Complaint. On December 15, 2017, the Complainant submitted its response to Panel Order No. 1.
The Complainant is a supplier of dietary supplements, according to the Complaint, throughout the world.
On April 21, 2009, it applied to register in the United States Trademark No. 3,797,245 which is described on the Register as a slightly stylized version of the term "Purus" followed by "LABS" in block letters. The trademark was registered on June 1, 2010, in respect of dietary and nutritional supplements in International Class 5.
According to the Register the trademark was first used in commerce in the United States on October 25, 2006. In its supplemental filing, the Complainant has pointed out that that recordal is based on information submitted to the United States Trademarks Office under oath. The Complainant also submitted a copy of the original label for its "Halovar" brand product which bears a copyright notice dated in 2006.
Amongst other things, the Complainant markets its products from a website at "www.puruslabs.net" and a Facebook page. Both appear to have been created in 2009.
The disputed domain name was registered on April 22, 2007. It resolves to a website in English which consists of pay-per-click links to dietary and other supplements. Some appear to be for the Complainant's products, but others are not.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
As noted above, both the Complaint and the amended Complaint were submitted in English.
Paragraph 11 of the Rules, however, specifies that the proceeding should be conducted in the language of the registration agreement unless the parties agree, or the Panel orders, otherwise.
As noted above, the Complainant maintained its position that the language of the proceeding should be English. The Respondent, however, objected; requesting Vietnamese.
The email from the Respondent requesting that Vietnamese be retained as the language of the proceedings is also in English. This is despite the fact that the Center's communications to the Respondent were in both English and Vietnamese. The Respondent did not set out any specific reason or disadvantage that he would allegedly suffer if the language of the proceeding were not in Vietnamese.
The fact that the content of the website is in English and the Respondent appears to have been able to correspond with the Center in English are factors which UDRP panels have considered sufficient to warrant allow the proceeding to go forward in a language other than the language of the registrations agreement: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.5.
In these circumstances and in the absence of any specific prejudice or disadvantage being claimed by the Respondent, the Panel considers it is appropriate to order under paragraph 11 of the Rules that English be the language of the proceeding.
Although the Respondent communicated with the Center about the language of the proceeding, no response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has failed to file a response, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances.
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark referred to in Section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Although it is in slightly stylized form, the verbal element of the Complainant's registered trademark is identical to the disputed domain name, disregarding the Top-Level Domain. The term "Purus Labs" remains the dominant feature of the trademark notwithstanding its slightly stylized form: WIPO Overview 3.0, section 1.10. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., Section 2.1 of the WIPO Overview 3.0.
It is apparent from the Complaint that the Complainant has not authorised the Respondent to use the Complainant's trademark and the Respondent is not connected or associated with the Complainant. The disputed domain name is also not derived from the Respondent's name. As noted above, the disputed domain name is being used as a landing page for a pay-per-click website which links to supplement products other than the Complainant's products.
All of these matters are typically sufficient to establish a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the use of the disputed domain name for pay-per-click links to supplement products other than the Complainant's own products generally does not qualify as good faith use under the Policy.
In the absence of a substantive response and having regard to the discussion in section 5.2.C below about the timing of the trademark registration and the disclaimer on the Respondent's website that the pay-per-click links are generated by a third party, therefore, the Panel finds that the Complainant has established the second requirement under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The way the Respondent has been using the disputed domain name is a very typical situation where registration and use in bad faith is found. There are two matters in the present case, however, which require further consideration.
The first is that the Respondent registered the disputed domain name in April 2007; some two years before the Complainant applied to register its trademark.
In the present case, however, the Complainant has provided evidence that it was using its trademark, albeit not registered as a trademark, from October 2006. That is, some six months before the registration of the disputed domain name.
The "purus" element of the Complainant's trademark may be translated as "pure" or "spotless" or "without stain" and "labs" would in many contexts be recognized as a shortened from of "laboratory".1 So, in some contexts, the expression as a whole might be considered descriptive or superlative.
However, that is not the case here. There is no evidence that the Respondent is operating a laboratory or providing services using a laboratory. On the contrary, the Respondent uses the disputed domain name to resolve to a webpage which features pay-per-click advertising links to the Complainant and competitive supplement products.
The second matter is the presence of a disclaimer on the Respondent's website:
"The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in WhoIs)."
It has long been established that a respondent cannot evade responsibility for the use made of the domain name by the use of such disclaimers: WIPO Overview 3.0, section 3.5. Respondents must control how their domain names are used or, if the use is made in defiance of their wishes, provide proof of their efforts to prevent or stop such use.
On the evidence in this proceeding, the Respondent does not appear to have any connection with the term "Purus Labs". It appears likely that the Respondent registered the disputed domain name with knowledge of the Complainant's trademark (albeit unregistered at the time). Moreover, the Respondent has sought to take advantage of the trademark significance of the disputed domain name through the pay-per-click advertising on the website to which the disputed domain name resolves.
Accordingly, on the record in this case, the Panel finds that the disputed domain name has been registered and used in bad faith.
For 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 <puruslabs.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 18, 2017
1 In other contexts, it might be understood for example as an affectionate term for Labrador dogs.
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