New U Life Corporation v. Chen Min Yu
Claim Number: FA2103001937104
Complainant is New U Life Corporation (“Complainant”), represented by Vanessa B. Pierce, Utah, USA. Respondent is Chen Min Yu (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newulifechinese.com> (“Domain Name”), registered with Register.com, Inc..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 19, 2021, Register.com, Inc. confirmed by e-mail to the Forum that the <newulifechinese.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement 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 March 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@newulifechinese.com. Also on March 29, 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 a Notification of Respondent Default.
On April 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
On April 26, 2021 the Panel issued a Panel Order under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). This order sought additional submissions from Complainant and Respondent regarding the use by the Complainant of its NEW U LIFE mark and the use by the Respondent of the Domain Name. On April 27, 2021, Complainant provided an additional submission in response to the Panel Order. Under the terms of the Panel Order Respondent had until May 6, 2021 to respond to Complainant’s additional submission. No response was received.
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 "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.
A. Complainant
Complainant owns the exclusive rights to the trademark registration for “NEW U LIFE” for use in connection with the sale of its products, including topical skin, supplements, and nutraceutical products. Complainant has rights in the NEW U LIFE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,069,970, registered June 2, 2020). Respondent’s <newulifechinese.com> domain name is confusingly similar to Complainant’s NEW U LIFE mark as it merely adds the word “Chinese” to Complainant’s wholly incorporated mark.
Respondent lacks rights or legitimate interests in the <newulifechinese.com> domain name. Respondent is not commonly known by the Domain Name nor has Respondent been authorized by Complainant to use the NEW U LIFE mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent uses the website to which the Domain Name resolves to (“Respondent’s Website”) to sell Complainant’s products on an unauthorized basis.
Respondent registered and uses the <newulifechinese.com> domain name in bad faith. Respondent uses the Domain Name to sell Complainant’s products on an unauthorized basis. Additionally, Respondent had actual knowledge of Complainant’s rights to the NEW U LIFE mark prior to registering the Domain Name based on Respondent’s use of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant’s Additional Submission consists of a sworn statement, made under penalty of perjury, from Complainant’s General Counsel to the effect that, prior to the commencement of the Proceeding, the Respondent’s Website consisted of a website where the Respondent used of unauthorized images and media to sell unauthorized versions of Complainant’s products. The additional submission noted that Complainant was unable to attach proof of the content of the Respondent’s Website as Respondent has now blocked access to the Respondent’s Website.
Complainant holds trademark rights for the NEW U LIFE mark. The Domain Name is confusingly similar to Complainant’s NEW U LIFE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 draw 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 rights in the NEW U LIFE mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 6,069,970, registered June 2, 2020). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <newulifechinese.com> domain name is confusingly similar to the NEW U LIFE mark as it fully incorporates the NEW U LIFE mark adding only the word “chinese” and the “.com” gTLD. The addition of a geographic term and a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the NEW U LIFE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Chen Min Yu” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive. Complainant alleges that prior to the commencement of the proceeding Respondent used the Domain Name for a website that used unauthorized images and media for the purpose of making unauthorized sales of Complainant’s goods, in direct competition with Complainant’s authorized distributors, who are the only entities allowed to sell Complainant’s products. The Panel, notwithstanding the fact that the Domain Name does not resolve to an active website and the Complaint contains no screenshots of the Respondent’s Website, accepts the Complainant’s sworn evidence of the content of the Respondent’s Website, noting that this evidence is not contradicted by the Respondent.
The use of a confusingly similar domain name to resolve to a webpage that sells complainant’s products on an unauthorized basis does not, absent further explanation and evidence, constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. This is because such a use may provide a false impression that the Respondent is affiliated with or authorized by Complainant. See Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain name because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, September 30, 2019, Respondent had actual knowledge of Complainant’s NEW U LIFE mark since the Respondent’s Website reproduced Complainant’s images and media and purported to offer the Complainant’s products for sale.[i] In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s NEW U LIFE mark for commercial gain by using the confusingly similar Domain Name to resolve to a website selling Complainant’s products on an unauthorized basis in direct competition with Complainant’s authorized distributors. Using a confusingly similar domain name to sell a complainant’s products on an unauthorized basis can evidence bad faith registration and use per Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newulifechinese.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 10, 2021
[i]The Panel notes that the date the Domain Name was registered predates the date on which the NEW U LIFE mark was registered with the USPTO. This is irrelevant as the NEW U LIFE Mark had been in use by Complainant for several years and the content of the Respondent’s Website clearly indicated an awareness of the Complainant at the date of registration.
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