23andMe, Inc. v. Fergyuson Mark
Claim Number: FA2102001930516
Complainant is 23andMe, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Fergyuson Mark (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <23andme.store>, registered with Registrar of Domain Names REG.RU LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint in English to the Forum electronically on February 1, 2021. The Forum received payment on February 1, 2021.
On February 2, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <23andme.store> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent, located in London, is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement, which is in Russian, 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 February 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Russian, setting a deadline of February 25, 2021 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@23andme.store. Also on February 5, 2021, 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 response from Respondent, the Forum transmitted to the parties, in English and Russian, a Notification of Respondent Default.
On March 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
As noted, the Registration Agreement is in Russian. Pursuant to Rule 11(a), the language of the proceeding shall be Russian unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant has requested that the language of the proceeding be English.
The Panel notes that the domain name and the website to which it resolves are in English and that Respondent is located in London, where the main language is English. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be conversant with English; that there would be no undue prejudice to Respondent if English were the language of the proceeding; and that it would be unnecessarily time-consuming and costly to require Complainant to translate the Complaint into Russian.
Accordingly, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Complaint and Commencement Notification, and determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant is a personal genetics company, which connects individuals to their unique, paired set of chromosomes. Complainant has rights in the 23ANDME mark through Complainant’s registrations of the mark, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <23andme.store> domain name is identical and thus confusingly similar to Complainant’s 23ANDME mark.
Respondent lacks rights or legitimate interests in the <23andme.store> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the 23ANDME mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent attempts to pass itself off as Complainant.
Respondent registered and uses the <23andme.store> domain name in bad faith. Respondent attempts to pass itself of as Complainant intentionally to attract Internet users to Respondent’s website for commercial gain. Furthermore, based on Respondent’s website, Respondent had actual knowledge of Complainant’s rights to the 23ANDME mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of 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 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and Qdraw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the 23ANDME mark through several registrations with the USPTO, including Reg. No. 3,661,355, registered July 28, 2009. The Panel finds Respondent’s <23andme.store> to be identical to Complainant’s 23ANDME mark as it merely adds the inconsequential generic top-level domain (gTLD) “.store”, which may be disregarded.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <23andme.store> domain name was registered on April 24, 2020. It resolves to a website that appears to be a copy of Complainant’s website at “www.23andme.com” and which also displays Complainant’s logo mark X23andMe, No. 3,596,012, registered with the USPTO on March 24, 2009. Respondent’s website purports to offer discounts to those entering their email address but, according to Complainant, doing so does not produce a transaction, leaving Respondent with the personal information provided.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <23andme.store> domain name.
Complainant has established this element.
Registration and Use in Bad Faith
This element requires Complainant to establish, on the balance of probability, that Respondent both registered the disputed domain name in bad faith and is using it in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The Panel accepts Complainant’s evidence that a comparison between Respondent’s webpage and the Internet Archive web capture of Complainant’s website from Mother’s Day, May 10, 2020, only a few days after Respondent registered the domain name, shows that Respondent blatantly copied Complainant’s website. Accordingly, it is clear that Respondent was well aware of Complainant’s trademarks when registering the domain name and did so intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of products or services on its website.
Accordingly, the Panel finds that Respondent registered and is using the <23andme.store> domain name in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <23andme.store> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 5, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page