New U Life Corporation and Xygenyx Inc. v. viger tamayo
Claim Number: FA2106001951066
Complainants are New U Life Corporation and Xygenyx Inc. (“Complainants”), represented by Vanessa B. Pierce, Utah, USA. Respondent is viger tamayo (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newulifejapan.com>, registered with Name.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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on June 15, 2021. The Forum received payment on June 15, 2021.
On June 18, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <newulifejapan.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 June 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@newulifejapan.com. Also on June 22, 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 July 16, 2021, pursuant to Complainants’ 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.
Complainants request that the domain name be transferred from Respondent, without specifying one of Complainants as transferee.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant New U Life Corporation is the registrant with the United States Patent and Trademark Office (“USPTO”) of the mark NEW U LIFE.
Complainant Xygenyx Inc. has applied to the USPTO to register the mark [IMAGE OMITTED] and has granted to New U Life Corporation a worldwide exclusive license to use that mark.
These circumstances satisfy the Panel that Complainants have a sufficient nexus for each of them to claim rights to the <newulifejapan.com> domain name and that they are therefore entitled to initiate this administrative proceeding together.
A. Complainants
Complainant New U Life Corporation has rights in the NEW U LIFE mark through its registration with the USPTO. Respondent’s <newulifejapan.com> domain name is confusingly similar to the NEW U LIFE mark.
Respondent lacks rights and legitimate interests in the <newulifejapan.com> domain name as Respondent is not commonly known by the domain name and is neither an authorized user nor licensee of the NEW U LIFE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the <newulifejapan.com> domain name to pass itself off as Complainant.
Respondent registered and uses the <newulifejapan.com> domain name opportunistically in bad faith with constructive and/or actual knowledge of Complainant New U Life Corporation’s rights in the NEW U LIFE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have established all the elements entitling them to relief.
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”).
New U Life Corporation has shown that it has rights in the NEW U LIFE mark through its registration with the USPTO Reg. 6,069,970, registered on June 02, 2020. The Panel finds Respondent’s <newulifejapan.com> domain name to be confusingly similar to Complainant’s NEW U LIFE mark, only differing by the addition of the geographic term “Japan” and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainants have established this element.
Xygenyx Inc. has applied to the USPTO to register the mark [IMAGE OMITTED], serial No. 90142715 and has licensed New U Life Corporation to use that mark. However, as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 1.1.4: “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”. See, for example Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349:
“…it is the preponderant view of panels under the Policy that unless such applications have proceeded to grant they do not constitute trademarks in which a complainant has UDRP-relevant rights. As the Panel noted recently in The Coca-Cola Company v. Whois Privacy Protection Service, Inc. / Thien Le Trieu, Le Trieu Thien, WIPO Case No. D2015-2078, this topic has received comprehensive treatment in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 and the more recent cases of Tiger Media, Inc. v. Leconte Pierre, WIPO Case No. D2011-0670 and Jetgo Australia Holdings Pty Limited v. Name Administration Inc. (BVI), WIPO Case No. D2013-1339. In these circumstances, the Panel finds that the Complainant does not have UDRP-relevant rights in respect of its various applications for registered trademarks.”
In the absence of any evidence of secondary meaning, the Panel finds that Complainants have not established that Xygenyx Inc. has rights in the mark [IMAGE OMITTED].
(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.
On March 25, 2017 Complainant New U Life Corporation registered the domain name <newulife.com>, which resolves to its website promoting, inter alia, topical skin and nutraceutical products branded with the SOMADERM mark, which is registered to Xygenyx Inc. and licensed to New U Life Corporation.
The <newulifejapan.com> domain name was registered on November 13, 2019, some 2 years after the November 28, 2017 claimed first use in commerce of New U Life Corporation’s NEW U LIFE mark and more than 2½ years after the registration of New U Life Corporation’s <newulife.com> domain name. The <newulifejapan.com> domain name resolves to a website displaying skin and nutraceutical products products branded with the SOMADERM mark, which are offered for sale. Respondent is not an authorized distributor of SOMADERM products.
These circumstances, coupled with Complainants’ 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 domain name.
Complainants have established this element.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant New U Life Corporation’s NEW U LIFE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the products on its website.
Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith.
Complainants have established this element.
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newulifejapan.com> domain name be TRANSFERRED from Respondent to Complainant New U Life Corporation.
Alan L. Limbury, Panelist
Dated: July 19, 2021
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