WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Archon Vitamin LLC v. Registration Private, Domains By Proxy LLC / Ekaterina Sergeeva

Case No. D2018-0088

1. The Parties

The Complainant is Archon Vitamin LLC of New Jersey, United States of America (“United States”), represented by Chipperson Law Group, P.C., United States.

The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States / Ekaterina Sergeeva of Poltava, Poland.

2. The Domain Name and Registrar

The disputed domain name <plantfusion.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2018, the Registrar transmitted by email to the Center its verification response:

(a) it is the Registrar for the disputed domain name;

(b) the language of the registration agreement is English;

(c) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name;

(d) but 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 January 22, 2018 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 January 26, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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, and the proceedings commenced on January 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2018.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 26, 2018. 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.

4. Factual Background

The Complainant is a United States corporation.

In October 2008, it began offering for sale and selling dietary or nutritional supplements under the trademark PLANTFUSION. According to the Complainant, its Plantfusion Complete Plant Protein product, which is available in five different flavours, scores a “perfect 1.0” on the Protein Digestibility Corrected Amino Acid Score which, the Complainant says, is “the gold standard for rating the quality of protein for human nutrition”.

According to the Complaint, the Complainant has been offering its goods for sale continuously since October 2008. It says its products are available throughout the world and are sold through major retailers including Amazon, Kroger, Sprouts, Vitamin Shoppe, Lucky Vitamin, Meijer, Fresh Thyme, Whole Foods Market, Wegmans and Earth Fare.

Since about 2011, the Complainant has offered its goods for sale through the website at “www.plantfusion.net”.

The Complainant has provided evidence of a number of registered trademarks for PLANTFUSION. These include:

- United States Registration No. 3919591 which was registered on February 15, 2011 in respect of amino acids for nutritional purposes, dietary and nutritional supplements, dietary food supplements, dietary supplemental drinks, dietary supplements, nutritional supplements, and powdered nutritional supplement drink mix in International Class 5;

- Canadian Registration No. TMA868523 which was registered on January 8, 2014 in respect of similar goods to those specified in the United States trademark;

- International Registration No. 1064237 which was registered on December 28, 2010 in respect of similar goods to those specified in the United States trademark and which designated Australia, China, Germany, the United Kingdom of Great Britain and Northern Ireland and the Russian Federation.

The disputed domain name was created on July 14, 2004. On August 13, 2014, it went into a reactivation period. On August 21, 2015, the disputed domain name was transferred to Olga Pererva.

While under Ms Pererva’s stewardship, the disputed domain name resolved to a website which featured the disputed domain name prominently as a banner at the top of the page and a series of pay-per-click (“PPC”) links. The PPC links included at least one link through to a dietary supplement provider which is in competition with the Complainant.
Early in December 2017, the Complainant initiated informal contacts with Ms Pererva which included an offer by the Complainant to acquire the disputed domain name for USD 250. When this was unsuccessful, on December 8, 2017, the Complainant’s lawyers sent a cease and desist letter to Ms Pererva. There was an inconclusive exchange of communications between the Parties.

On or about December 15, 2017, the disputed domain name was transferred into the current registration under “Registration Private, Domains by Proxy”. From about this date, the disputed domain name resolved to a website which is a blank white page.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record 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 to the Respondent.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Accordingly, paragraph 4(a) of the Policy provides that, to divest the Respondent of the disputed domain names, the Complainant must demonstrate for each of the disputed domain names 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 that disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 names must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.

The Complainant also contends that it has acquired rights at common law in “Plantfusion” as an unregistered trademark. The Panel, however, is not in a position to make an assessment about the scope and extent of such rights in view of the very limited information provided by the Complainant to support its claim: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.

The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview 3.0, section 1.7.

The disputed domain name is identical to the Complainant’s registered trademarks, apart from the addition of
the generic Top-Level Domain (“gTLD”) “.com”, which may be disregarded for this purpose: WIPO Overview 3.0 section 1.11.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

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.

The Complainant points out that both its use and registration of its trademark occurred many years before the Respondent registered the disputed domain name. The disputed domain name is not derived from the Respondent’s name – whether (as discussed in section 5C below) the Respondent is Ms Sergeeva or the former holder, Ms Pererva. The Complainant also has not licensed or authorised the Respondent to use its trademark in any domain name and, according to the Complainant, the Respondent is not associated with it or its business in any way.

At this time, the disputed domain name does not resolve to an active website. The Respondent, Ms Sergeeva, has not sought to demonstrate what plans, if any, she may have for the disputed domain name. So, while the time since the disputed domain name was registered in her name is comparatively brief, there is no suggestion of any demonstrable preparations to use the disputed domain name in connection with any good faith offering of goods or services or other legitimate noncommercial or fair use. Indeed, as discussed below in section 5C, the Complainant contends that the disputed domain name has been transferred into Ms Sergeeva’s name in an attempt to evade the sanctions under the Policy. The previous holder of the disputed domain name was using the disputed domain name for a PPC website which included links to products competing with the Complainant’s products. That does not qualify as good faith use under the Policy.

Taken together, these factors satisfy the requirement of a prima facie case under the second requirement.

The Respondent has not attempted to rebut that prima facie case.

Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names 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, 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.

As noted above, the disputed domain name was registered in the name of a Ms Pererva for almost two and one half years before it was transferred into the hands of the current registrant. During that period, the disputed domain name resolved to a PPC website which sought to take advantage of the Complainant’s trademark, PLANTFUSION, to generate traffic.

Evidence submitted by the Complainant shows that Ms Pererva is the holder of some 638 domain names including <googfle.com>, <lexmak.com>, <capitalomne.com>, <xbox.com> and <fujuitso.com> which are obvious misspellings of famous trademarks. Moreover, Ms Pererva has been the subject of at least three UDRP decisions prior to this dispute in which she has been found to have registered and used a domain name in bad faith: ACCOR v. Olga Pererva, WIPO Case No. D2012-0539; Bank of Canton v. Olga Pererva NAF Claim No. 1672374 and Doha Bank (Q.S.C.) v. Olga Pererva, WIPO Case No. D2016-1508.

Ms Pererva shares the same physical address as Ms Sergeeva.

The email addresses used by both Ms Sergeeva and Ms Pererva as the registrant, administrative and technical contacts for the disputed domain name are different. However, evidence submitted by the Complainant shows that they are both associated with one Oleksandr Korhun. Mr Korhun holds some 489 domain names. He has also been found to have registered and used a domain name in bad faith in R. T. Quaife Engineering v. Oleksandr Korhun, WIPO Case No. D2017-0135.

The Panel also recalls that the disputed domain name was transferred into Ms Sergeeva’s name under the cloak of a privacy service when the Complainant’s lawyers advised Ms Pererva that the Complainant would be seeking redress under the Policy.

In these circumstances, it appears likely that Ms Sergeeva, Ms Pererva and Mr Korhun are one and the same person or at least working together.

The use made of the disputed domain name while Ms Pererva was the registrant qualifies as use in bad faith under the Policy. That use also indicates the purpose for which the disputed domain name was registered: to take advantage of PLANTFUSION’s significance as the Complainant’s trademark.

If Ms Sergeeva is Ms Pererva or Mr Korhun, therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. If Ms Sergeeva is indeed a separate person, it is nonetheless appropriate to attribute the motives and conduct of Ms Pererva / Mr Korhun to her as well in the circumstances of this case. Moreover, as already noted, the disputed domain name now resolves to a blank, white page. That kind of passive use in the circumstances where there appears to be a close association with the previous registrant and an attempt to avoid the strictures of the Policy by transferring the disputed domain name to someone who appears to be an independent third party (under the cloak of a privacy service) itself indicates registration and use in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

6. Decision

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, <plantfusion.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: March 12, 2018