Yulex Corporation v. Jeanine Behr / Kids Think Big
Claim Number: FA1611001701009
Complainant is Yulex Corporation (“Complainant”), represented by John E. Cummerford of Greenberg Traurig, LLP, Arizona, USA. Respondent is Jeanine Behr / Kids Think Big (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yulexpure.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2016; the Forum received payment on November 1, 2016.
On November 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yulexpure.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2016 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@yulexpure.com. Also on November 9, 2016, 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 December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant has rights in the YULEX mark based on the mark’s registration with the United States Patent and Trademark Office (“USPTO”).
Complainant also has filed for registration of its YULEX PURE mark, and has common law rights in the YULEX PURE mark.
Respondent’s <yulexpure.com> domain name is either identical to Complainant’s YULEX PURE mark because a generic top-level domain (“gTLD”) and spacing is irrelevant for Policy ¶ 4(a)(i) analysis, or Respondent’s domain name is confusingly similar to the YULEX mark because “pure” is a descriptive term suggestive of Complainant’s products.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise granted Respondent any permission to use its YULEX or its YULEX PURE marks, and Respondent is not commonly known by the disputed domain name. Respondent is not currently making any active use of the <yulexpure.com> domain name, and this cannot be said to be a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Respondent registered and is using the <yulexpure.com> domain name in bad faith. Complainant hired Respondent expressly to register the disputed domain name, and Respondent’s registration of the domain name as a former employee constitutes bad faith. Respondent’s engagement by Complainant also indicates that it had actual knowledge of the YULEX PURE mark at the time it registered the disputed domain name. Further, the Respondent’s failure to make any active use of <yulexpure.com> can be held to be in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a formal Response in this proceeding however she responded by email to the dispute resolution provider stating:
After consulting with legal representation I am prepared to transfer [<yulexpure.com>] domain to complainant upon receiving confirmation in writing that the UDRP case will be withdrawn and the complainant releases any and all claims against Jeanine Behr, Kids Think Big, all agents, servants and employees and those who may have acted in concert with me.
Complainant has rights in the YULEX mark through its registration of such mark with the USPTO and also through its other registrations worldwide.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its YULEX trademark.
Respondent failed to make any active use of the at-issue domain name.
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 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 (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.”).
As mentioned above, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In its email response to the FORUM Respondent indicates a willingness to transfer the at-issue domain name to Complainant. However, Respondent conditions such transfer on Complainant withdrawing its Complaint and releasing Respondent and third parties from liability. Since Respondent demands material consideration before it will transfer the domain name, its “consent” to transfer is not unequivocal. Therefore, the Panel finds it appropriate to decide the instant dispute on its merits.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the YULEX mark with the USPTO is sufficient to demonstrate Complainant’s rights in such mark under the POLICY. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). It further appears that Complainant may also have rights in YULEX PURE. Nevertheless it is sufficient for the purposes of the Policy that Complainant has rights in its YELEX trademark without the Panel having to further consider Complainant’s rights in YULEX PURE.
Respondent’s at-issue domain name contains Complainant’s entire YULEX trademark followed by the generic term “pure” and the top-level domain name “.com”. However, the differences between Respondent’s domain name and Complainant’s YULEX mark are insufficient to distinguish one from the other for the purposes of the Policy. Indeed, the inclusion of the term “pure” makes the second level domain name an overt reference to one of Complainant’s products, and to a trademark in which it claims rights. Therefore, the Panel finds that the <yulexpure.com> domain name is confusingly similar to Complainant’s YULEX trademark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding top-level domains are irrelevant for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Jeanine Behr / Kids Think Big” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <yulexpure.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <yulexpure.com> domain name is not active. Importantly, Respondent’s lack of use of the trademark laden domain name precludes a finding supporting Respondent having rights or interests in the domain name pursuant to Policy ¶¶ 4c(i) or 4(c)(iii). See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no rights or legitimate interests from the respondent's alleged "free speech" use of the domain name <vivendiuniversalsucks.com>, which fully incorporated the complainant's VIVENDI UNIVERSAL mark, because the domain name was inactively held).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent registered and used the <yulexpure.com> domain name in bad faith. Although Complainant has not alleged Respondent’s bad faith by reference to any of the provisions in Policy ¶ 4(b)(iii), those provisions are not all inclusive of the universe of UDRP bad faith circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s passive holding of a domain name containing Complainant’s entire YULEX mark, absent any indication of a plausible good faith use of the domain name and given the fact that Respond admits to Complainant’s contentions of wrong doing by its failure to respond to the Complaint, shows Respondent’s opportunistic attempt to improperly appropriate the goodwill associated with Complainant’s trademark. These circumstances demonstrate Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith”).
Additionally and as mentioned above, Respondent fails to actively use the at-issue domain name. Holding a confusingly similar domain name without actively using it suggests Respondent’s bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <yulexpure.com> domain name knowing that Complainant had trademark rights in the YULEX mark. Respondent’s prior knowledge is evident because Respondent was engaged by Complainant to secure the domain name for Complainant’s benefit. Therefore, it is clear that in retrospect Respondent registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason such as to benefit Complainant. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <yulexpure.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yulexpure.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 7, 2016
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