New U Life Corporation and Xygenyx Inc. v. John Keller
Claim Number: FA2101001929911
Complainant is New U Life Corporation and Xygenyx Inc. (“Complainants”), represented by Vanessa B. Pierce, Utah, USA. Respondent is John Keller (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <somaderngel.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Aaron B. Newell, ESQ as Panelist.
Complainants submitted a Complaint to the Forum electronically on January 27, 2021; the Forum received payment on January 27, 2021.
On January 29, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <somaderngel.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@somaderngel.com. Also on February 1, 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.
A timely Response was received and determined to be complete on February 19, 2021.
On February 24, 2021, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell 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 to Complainants.
A. Complainants
The Complainants are New U Life Corporation (“New U”) and Xygenyx Inc. New U licenses the relevant trademark registrations from Xygenyx, Inc. For ease, I will refer to Xygenyx as “Complainant” hereinafter.
Complainant, with New U, asserts the following:
i) Complainant is the owner of two United States trademark registrations for SOMADERM, being nos 5657594 in class 5 for Nutraceuticals for use as a dietary supplement; dietary supplements; nutritional supplements filed 16 January 2018 and registered 15 January 2019 and no 5704649 in class 3 for Topical skin sprays for cosmetic purposes filed 8 January 2018 and registered 19 March 2019;
ii) SOMADERM is a topical gel product for application to the skin and has been marketed in the United States by New U with Complainant’s authorization since as early as 14 March 2018.
iii) The domain name <somaderngel.com> is confusingly similar to SOMADERM, particularly given that the SOMADERM product is a gel.
iv) The domain name was registered 28 January 2019 and Respondent had knowledge of Complainant’s SOMADERM name at the time of registration.
v) Respondent has used the domain name for unauthorized sales of Complainant’s SOMADERM products. Complainant carefully controls its sales network and Respondent is not an authorized to sell Complainant’s SOMADERM products.
vi) Respondent is using the domain name in order to create an impression of some kind of commercial connection with Complainant and thereby gain advantage from its use of the confusingly similar domain name.
B. Respondent
Respondent asserts as follows:
i) Respondent is an independent reseller of Complainant’s SOMADERM products at the domain name order-hghgel.com.
ii) Respondent is known to New U, and New U is its supplier. Respondent has been contacted by New U numerous times regarding the content of its order-hghgel.com website. New U has frequently requested changes to the website (but, Panel notes, there is no assertion that New U has ever requested that Respondent stop retailing the SOMADERM product). Respondent has always complied with these requests for changes.
iii) New U has however required that Respondent not use domain names containing “SOMADERM”.
iv) Respondent was using the domain name ordersomadermgel.com to retail Complainant’s product, but ceased using it at the Request of Complainant.
v) Respondent at the time asked what domain names it could use, and was told that its domain names could not contain “SOMADERM”.
vi) Respondent presently uses <somaderngel.com> for a “sandbox” website for cloud storage but does not sell any products from the domain name.
The Panel finds:
i) Complainant owns the Registrations.
ii) New U is a licensee of Complainant and represents Complainant in its commercial dealings in respect of the SOMADERM name and product.
iii) Respondent was aware of New U, Complainant and the Complainant’s SOMADERM name and products when it registered the domain name.
iv) <somaderngel.com> was used by Respondent for a website retailing Complainant’s products – this is clear from Panel’s own review of archive.org.
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.
<somaderngel.com> is confusingly similar to Complainant’s SOMADERM trademark, in which the Complainant has registered trademark rights as noted above.
The letters M and N are easily confused in a domain name, and the term “gel” does not distinguish the domain name from the trademark registrations.
The requirement under Policy Paragraph 4(a)(i) is met.
Through its ongoing discussions with New U in respect of the domain name order-hghgel.com, the Respondent appears to understand that it should comply with New U’s branding guidelines relating to the sale of the SOMADERM product.
Respondent also understands from past discussions with New U that New U objects to use of SOMADERM in its distributors’/retailers’ domain names.
Despite this, Respondent registered and used <somaderngel.com> to sell Complainant’s product.
On balance of probabilities, the domain name appears to have been registered with a view to creating a confusingly similar domain name through which to sell Complainant’s products, and as an attempt to circumvent Complainant’s branding requirements for distributors/retailers of its products.
The advantage gained by Respondent is the appearance of being New U and/or the Complainant and/or being more closely connected to New U and/or the Complainant that it really is.
This constitutes willful misuse of Complainant’s SOMADERM brand and a misrepresentation, and does not give rise to a legitimate interest.
Subsequent use of the domain name for cloud storage access does not legitimize this conduct or any interest Respondent may allege that it has in the domain name for the purposes of the UDRP.
The requirement under Policy Paragraph 4(a)(ii) is met.
In the circumstances, Respondent’s unauthorized commercial use of a domain name that is intended to be confusingly similar to a specific registered trademark constitutes bad faith use of the domain name.
On balance of probabilities, this conduct was Respondent’s intention at the time of registration of the domain name.
The domain name was therefore registered and used in bad faith.
The requirements under Policy Paragraph 4(a)(iii) are met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <somaderngel.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, ESQ Panelist
Dated: March 11, 2021
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