Complainant is LivOn Laboratories, Inc. of Henderson, Nevada, United States of America (“United States”), represented by Manatt, Phelps & Phillips, LLP, United States.
Respondent is Mike Kearl of Melissa, Texas, United States, represented by Ferguson, Braswell & Fraser, PC, United States.
The disputed domain names, <livlabs.com> and <livlabsnow.com>, are registered with GoDaddy.com, LLC (“Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact information and other details of the registrations.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Response was filed with the Center on September 27, 2018. On October 3, 2018, the Center received an unsolicited supplemental filing from Complainant.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 16, 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.
Complainant owns a United States federal trademark registration for the word mark LIVON LABORATORIES (Reg. No. 4222338), registered October 9, 2012, and a registration for the LIVON LABS design mark (Reg. No. 5491889), registered June 12, 2018. Complainant also claims rights in the LIVON LABS marks dating back to 2004. The LIVON marks are used in connection with dietary and nutritional supplements.
Respondent registered the disputed domain name <livlabs.com> on December 1, 2017 and the disputed domain name <livlabsnow.com> on June 22, 2018. Both disputed domain names resolve to a website offering organic hemp-based products, such as a balm, hemp oil drops, and a dietary supplement under the name “liv.labs”.
Complainant owns a LIVON LABORATORIES and LIVON LABS family of marks and trade names, which it uses for dietary and nutritional supplements.
The disputed domain names are confusingly similar, and nearly identical to, Complainant’s marks. They omit only the “on” portion of LIVON LABS and otherwise include Complainant’s distinctive spelling of the word “live” (i.e., “liv”) and “labs”, which is universally recognized as an abbreviation for “laboratories”.
Respondent is an individual named “Mike Kearl”. Respondent has not been licensed by or have any relationship with Complainant that would authorize Respondent to use Complainant’s marks.
Respondent does not lawfully conduct business using the disputed domain names. Instead, Respondent uses LIV LABS throughout its commercial website to offer goods it advertises as “hemp” derived “supplement[s]” for “pain relief” that are “designed to restore balance and wellness”, in direct competition with Complainant’s dietary and nutritional supplements sold under its LIVON LABS marks.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The only reason Respondent registered the disputed domain names and hosts a commercial website available at the disputed domain names in competition with Complainant is to unlawfully misdirect users who are searching for Complainant to Respondent’s website.
Respondent’s products directly compete with those of Complainant. Further, Respondent’s cannabis‑based products are highly controversial with an uncertain legal status.
That Respondent knew of Complainant’s LIVON LABS marks is demonstrated by: registration of the disputed domain names, which incorporate Complainant’s LIVON LABS mark nearly in its entirety, and Respondent’s description of its goods as “supplements” that are “designed to restore balance and wellness”. It is inconceivable that Respondent operates a business in the supplement industry selling goods that directly compete Complainant’s products and registered two domain names that almost entirely incorporate Complainant’s LIVON LABS mark without knowing of Complainant and its LIVON LABS marks. Further, Complainant’s United States trademark registrations provided constructive notice of Complainant’s marks.
Complainant de-emphasizes the “On” portion of in its “LIVON” marks. “LivOn” creates a different commercial connotation than the commercial connotation of the disputed domain names <livlabs.com> and <livlabsnow.com>. “Live On” indicates an ability or desire to continue to live through hardship or adversity, or to continue to exist, consistent with the story of Complainant’s founder set out on Complainant’s website. This is consistent with the logo form of Complainant’s marks, which include the letter “O” as a stylized sphere. In contrast, Respondent’s “Liv” exhorts a person to live life to the fullest.
Respondent, Mike Kearl, is Chief Technology Officer of LaCore Enterprises, LLC, which currently owns a majority interest in Meridian International, LLC (“Meridian”), which does business as LIV Labs. Meridian was formed in 2015. In July 2017, it began “pre-selling” products under the LIV mark, entering into an agreement with a supplier.
On December 1, 2017, Meridian registered the <livlabs.com> domain name, identifying a member of the limited liability company as the “Registrant”. After conducting a search with the Texas Secretary of State, on December 2, 2017, Meridian filed an Assumed Name Certificate to register the assumed name “LIV Labs”. Meridian offered and sold products bearing the LIV mark on the website associated with the disputed domain names for more than nine months by the time the Complaint was filed.
There is no basis for Complainant’s argument that these activities cannot be not considered bona fide simply because the products compete with Complainant’s products.
Respondent has provided written testimony of several individuals, in contrast to Complainant, which has provided only “attorney argument.” Respondent’s two declarations, of the sole member of Meridian and of Respondent, attest to a lack of knowledge of Complainant or its marks, products, or website and regarding the registration and use of the disputed domain names.
The first of the disputed domain names, <livlabs.com> was registered in December 1, 2017. In June 2018, Respondent registered the second of the two disputed domain names, <livlabsnow.com> in his role as Chief Technology Officer of LaCore Enterprises (“LaCore”), which was purchasing a majority interest in Meridian. After the purchase, LaCore took control of the <livlabs.com> domain name, which redirected to “www.lavlabsnow.com”.
During the period from December 1, 2017, when the <livlabs.com> domain name was registered, through September 7, 2018, when the Complaint was notified, Respondent continuously sold its products bearing the mark LIV through the website associated with the two disputed domain names. No one associated with Meridian or LaCore had any knowledge of Complainant, its marks, its products, and/or its website until long after the disputed domain names had been registered and substantial sales of LIV products had taken place.
Respondent requests a finding of reverse domain name hijacking based on Complainant’s lack of evidence of bad faith, Complainant’s failure to perform a basic pre-filing inquiry, and Respondent’s compelling evidence of good faith.
To prevail, a complainant must prove, as to a disputed domain name, that: (a) it is identical or confusingly similar to a mark in which the complainant has rights, (b) respondent has no rights or legitimate interests in respect to it, and (c) it has been registered and is being used in bad faith. Policy, paragraph 4(a).
The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
The Rules define the “Respondent” as “the holder of a domain‑name registration against which a complaint is initiated”. See Rule 1, s.v. “Respondent.” Therefore, the Complaint properly named Mike Kearl as Respondent. Based on the declarations provided by Respondent and the evidence showing that since shortly after the first of the disputed domain names was registered, the associated website has been used to offer Meridian’s products using the LIV mark, the Panel is persuaded that Meridian (through its majority owner, LaCore) is responsible for and the beneficial holder of the registration.
As noted above, following the filing of the Response, Complainant sent an unsolicited supplemental submission to the Center. As an initial matter, neither the Rules nor the Supplemental Rules provide for the filing of submissions other than a complaint and response.
The Panel is of the view that supplemental submissions are appropriate only in exceptional cases, for example, the existence of new, pertinent facts that did not arise until after the party’s submission or the need to bring new, relevant authority to the Panel’s attention. To seek or accept supplemental submissions under other circumstances undercuts the streamlined procedures established by ICANN. The Panel finds that this communication does not present new facts or arguments or a response to an argument or a rebuttal that could not have been reasonably anticipated. Accordingly, the Panel does not consider this communication for purposes of this decision, but notes in any event that had the Panel considered such submission, it would not have changed the Panel’s determination in this matter.
Complainant has established its rights in the LIVON LABORATORIES and LIVON LABS marks through its United States trademark registrations.
Neither of the disputed domain names are identical to Complainant’s mark. The question then becomes whether either is confusingly similar to the mark (disregarding the Top-Level Domain). This typically involves a straightforward side-by-side comparison with the textual components of a mark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel subscribes to the consensus view that the fact /amc/en/domains/search/overview3.0/that a mark is incorporated into a disputed domain name or a dominant feature of a mark is recognizable within the domain name, is generally sufficient to establish confusingly similarity for purposes of the first element. WIPO Overview 3.0, section 1.8.
Here the entirety of Complainant’s mark is not incorporated into either of the disputed domain names. Instead, only the elements “liv” (exclusing “on”) and “lab” are included in the disputed domain names. In the Panel’s view, this presents a closer issue; however, on balance, the Panel finds this similarity sufficient for purposes of meeting the threshold of the first element.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). The Panel finds that the Respondent has rebutted any prima facie showing made by Complainant.
The evidence provided by Respondent establishes that prior to the filing of the Complaint, each of the disputed domain names was being used in connection with a bona fide offering of goods within the meaning of the Policy. Meridian, the beneficial holder of the disputed domain names registered the disputed domain name <livlabs.com> as well as the assumed name “LIV Labs” in December 2017. The evidence provided by Respondent — through the declarations of its witnesses and printouts from the Internet Archive — show that shortly after that time, Meridian used the disputed domain name <livlabs.com> for its website offering its hemp-based products under the LIV brand, resulting in substantial sales. Respondent subsequently registered the second of the two disputed domain names, i.e., <livlabsnow.com>, about six months later. The disputed domain name <livlabsnow.com> was used for the same website.
The Panel finds Respondent’s evidence of business activities and product offerings under the LIV brand prior to notice of this proceeding to be credible evidence that establishes its use of each of the disputed domain names in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. The Panel further concludes that the evidence reinforces the lack of any indicia of cybersquatting intent. See also WIPO Overview 3.0, section 2.2.
The Panel concludes that Respondent has rebutted Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain names.
In light of the Panel’s conclusion as to the second element, Complainant cannot prevail. Policy, paragraph 4(a). Therefore, the Panel need not address the third element.
As noted above, Respondent has argued that Complainant has attempted to engage in Reverse Domain Name Hijacking (defined in the Policy, paragraph 1, as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”). The Rules, paragraph 15, provide:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As discussed above, the Panel has concluded that Complainant, who is represented by counsel, failed to establish the required elements. Nonetheless, Complainant established ownership of United States federal trademark registrations containing terms (“liv” and “lab”) used in each of the disputed domain names and presented an argument that each was confusingly similar to its marks. Further, registration of the disputed domain names in the name of an individual, rather than the legal entity that operated the associated website may have likely contributed to a belief that the Respondent had no rights or interests in them.
On this record, the Panel does not conclude that the Complaint was brought in bad faith or brought primarily to harass Respondent and declines to find that Complainant attempted to engage in Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Date: October 27, 2018