Priovant Therapeutics, Inc. v Tisa a Johnson

WIPO Case No. D2024-5202

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Priovant Therapeutics, Inc. v. Tisa A Johnson

Case No. D2024-5202

1. The Parties

The Complainant is Priovant Therapeutics, Inc., United States of America (the “United States”), internally represented.

The Respondent is Tisa A Johnson, United States.

2. The Domain Name and Registrar

The disputed domain name <priovanttx.org> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2024, 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 (Currently Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2024, 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 amendment to the Complaint on December 19, 2024.

The Center verified that the Complaint together with the amendment to the 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, and the proceedings commenced on December 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2025.

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The Center appointed Clark W. Lackert as the sole panelist in this matter on January 21, 2025. 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 clinical-stage biotechnology company focused on delivering novel therapies for autoimmune diseases with the greatest morbidity and mortality, with its principal website at the domain name <priovanttx.com>, such domain name registered by Complainant on September 27, 2021. The Complainant uses its trademark PRIOVANT globally on pharmaceutical preparations for human use, namely, for the prevention and treatment of immunological, auto-immune, rheumatological, dermatological and oncological diseases and disorders; biological preparations for medical and therapeutic purposes, namely, for the prevention and treatment of immunological, auto-immune, rheumatological, dermatological and oncological diseases and disorders; scientific and technological services, namely, medical research, scientific research and analysis in the fields of pharmaceutical and biomedicine; pharmaceutical and biomedical research services; research in the field of pharmaceutical and biologic therapeutic preparations; pharmaceutical research and development; providing scientific research information in the field of pharmaceuticals and biomedicine; providing health and medical information; and providing information relating to the diagnostic, prophylactic and therapeutic properties of pharmaceutical preparations and biologic preparations for the prevention and treatment of diseases, disorders and conditions.

The Complainant is the owner of registrations in various jurisdictions on its trademark PRIOVANT including:

Jurisdictions	Registration Number	Registration Date
United States	6924850	December 13, 2022
International Registration – Australia, Brazil,	1654058	January 28, 2022
Canada, India, Israel, Japan, Mexico, Norway,
Republic of Korea, United Kingdon, Singapore,
European Union, China, Russian Federation
Switzerland	767903	August 17, 2021

This disputed domain name was registered on October 16, 2024.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Pursuant to Policy, Paragraph 4(a)(ii), Rules, Paragraph 3(b)(ix)(1), the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The disputed domain name incorporates the entirety of Complainant’s PRIOVANT trademark. Also, the disputed domain name, <priovanttx.org>, is identical to Complainant’s registered domain name, <priovanttx.com>, with the exception of the generic Top- Level Domains (“gTLDs”) “.com” and “.org”. Complainant maintains its corporate website at the domain name <priovanttx.com>.

Pursuant to Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2), Respondent is making no legitimate noncommercial or fair use of the domain name; rather, Respondent has attempted to use the domain name to defraud potential job applicants of Complainant and to tarnish the trademark PRIOVANT. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection

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with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly
known by the domain name.

Pursuant to Policy, Paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(3), the disputed domain name was registered after Complainant’s trademark rights accrued, and has been used in bad faith by the Respondent.

Complainant became aware in October 2024 that Respondent, using false names or names of actual
employees of Complainant, and using Complainant’s company logo and trademark PRIOVANT, has been
diverting web traffic and making unauthorized employment offers to potential job candidates using email
addresses containing the domain name <priovanttx.org>, and attempting to defraud potential job applicants
by directing them to send money. The Complainant began receiving dozens of submissions through its
Contact page from individuals who had received fraudulent job offers from persons who falsely claimed to be
representatives of Complainant, often accompanied by requests for money. Some of the victims of this scam
specifically referenced that the fraudulent communications they received had come from
“[…]@priovanttx.org” email addresses; others simply described similar behavior without specifying the exact

email addresses from which they received the communications.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7. Additionally, the Respondent has added the additional identical letters “tx”
to the disputed domain name to mimic the additional “tx” letters added to Complainant’s trademark in

Complainant’s primary domain name <priovanttx.com>.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has purposely diverted web traffic aimed at
Complainant’s website to its one by using a confusingly similar domain name. This violates Policy 4(b)(iv)
by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion
with the Complainant’s mark.

Not only was web traffic diverted, the disputed domain name was used to engage in illegal activity which has also been held to be evidence of bad faith use and registration. Specifically, panels have held that the use of a domain name for illegal activity, here, fraudulent impersonation of Complainant as Complainant’s

employees and requesting money from unsuspecting job applicants, constitutes bad faith. and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. 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 <priovanttx.org> be transferred to the Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: January 30, 2025