MyLife.com, Inc. v. Feng He
Claim Number: FA1403001549575
Complainant is MyLife.com, Inc. (“Complainant”), represented by Pamela D. Deitchle of GRACE+GRACE LLP, United States. Respondent is Feng He (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mylife-com.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2014; the National Arbitration Forum received payment on March 19, 2014.
On March 20, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mylife-com.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2014 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@mylife-com.com. Also on March 20, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
a) Complainant is a leading provider of social networking and personal data and search services. Complainant has operated <mylife.com> since at least 2009.
b) Complainant has rights in the MYLIFE.COM mark, used in connection with social networking and personal data and search services. Complainant owns registrations for the MYLIFE.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,990,423 registered July 5, 2011).
c) Respondent’s <mylife-com.com> domain name is confusingly similar to Complainant’s MYLIFE.COM trademark. The disputed domain name incorporates Complainant’s mark in its entirety while adding a hyphen and the term “com.”
d) Respondent does not have any rights or legitimate interests in the <mylife-com.com> domain name.
e) Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MYLIFE.COM mark in any way.
f) The <mylife-com.com> domain name resolves to a website featuring links to Complainant’s competitors.
g) Respondent registered and is using the <mylife-com.com> domain name in bad faith.
h) Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s MYLIFE.COM mark. The disputed domain name promotes links to Complainant’s competitors, and Complainant presumes that Respondent receives click-through revenue from these links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MYLIFE.COM mark. Respondent’s domain name is confusingly similar to Complainant’s MYLIFE.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mylife-com.com> domain name, and that Respondent registered and uses 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it has rights in the MYLIFE.COM mark, used in connection with social networking and personal data and search services. Complainant owns registrations for the MYLIFE.COM mark with the USPTO (e.g., Reg. No. 3,990,423 registered July 5, 2011). Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however,a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the MYLIFE.COM mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <mylife-com.com> domain name, registered on January 15, 2014, is confusingly similar to Complainant’s MYLIFE.COM trademark. The disputed domain name incorporates Complainant’s mark in its entirety while adding a hyphen and the term “com.” The domain name also adds the generic top-level domain (“gTLD”) “.com.” First, the addition of a generic or descriptive term to a trademark in a domain name does not sufficiently differentiate the domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the addition of a hypen and a gTLD is irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, Respondent’s <mylife-com.com> domain name is confusingly similar to Complainant’s MYLIFE.COM trademark under 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 disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent does not have any rights or legitimate interests in the <mylife-com.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MYLIFE.COM mark in any way. The WHOIS record for the disputed domain name lists “Feng He” as the domain name registrant. The WHOIS record, whether the respondent was authorized to use the trademark, and the record in its entirety, may be considered by the Panel in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the MYLIFE.COM mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <mylife-com.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <mylife-com.com> domain name resolves to a website featuring links to Complainant’s competitors. The links on the resolving website include “Public Search-Free Search,” “Public Arrest Records,” and “Find Anyone – Free.” Using a confusingly similar domain name to promote links of a complainant’s competitors does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <mylife-com.com> domain name resolves to a website featuring links to Complainant’s competitors.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <mylife-com.com> domain name in bad faith. Complainant asserts that Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s MYLIFE.COM mark. Complainant notes that the disputed domain name promotes links to Complainant’s competitors, and Complainant presumes that Respondent receives click-through revenue from these links. Using a confusingly similar domain name to promote links of a complainant’s competitors constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <mylife-com.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name promotes links to Complainant’s competitors, from which Respondent is presumed to obtain commercial gain.
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 <mylife-com.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 22, 2014
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