New U Life Corporation and Xygenyx Inc. v. Harumi Fujiwara
Claim Number: FA2111001972535
Complainant is New U Life Corporation and Xygenyx Inc. (“Complainants”), represented by Vanessa B. Pierce, Utah, USA. Respondent is Harumi Fujiwara (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <soma-derm.net>, registered with Japan Registry Services Co., Ltd..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2021; the Forum received payment on November 9, 2021. The Complaint was received in Japanese and English.
On November 11, 2021, Japan Registry Services Co., Ltd. confirmed by e-mail to the Forum that the <soma-derm.net> domain name is registered with Japan Registry Services Co., Ltd. and that Respondent is the current registrant of the name. Japan Registry Services Co., Ltd. has verified that Respondent is bound by the Japan Registry Services Co., Ltd. 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 17, 2021, the Forum served the Japanese language Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of December 7, 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@soma-derm.net. Also on November 17, 2021, the Japanese and English language 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 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes that the registration agreement is written in Japanese, thereby making Japanese the language of the proceedings. However, Complainant submitted its original complaint in English and its amended complaint in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
As stated in the Complaint, the relief sought is “the Panel issue a decision that the domain-name registrations (sic) be transferred.” The Panel observes that these proceedings involve one domain name and two named complainants.
A. Complainant
Complainants asserts that “through [a] Trademark License Agreement [they] own the exclusive rights to two trademark registrations for SOMADERM”. They state that they “have been using the SOMADERM marks in connection with their goods since at least as early as March 14, 2018.” They submit that the “domain incorporates Complainants’ registered mark SOMADERM [and] is misleading and is easily mistaken by the general public.”
Complainants submit that Respondent is not commonly known by the disputed domain name and has not used or prepared to use the name in connection with a bona fide offering of goods or services. To Complainants’ knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating the SOMADERM trademark anywhere in the world and Respondent has not been authorized, licensed, or permitted by Complainants to register or use the disputed domain name.
The Complainants submit that the domain name was registered and used in bad faith. They state that “the disputed domain name is so obviously connected to Complainants’ SOMADERM trademarks that the very use by someone with no apparent ownership interest in SOMADERM and no connection to Complainants suggests opportunistic bad faith.” Further, that the domain name resolves to a website that “contains images and videos owned by the Complainants which the Respondent has not been authorized to use.” Furthermore, that use demonstrates [prior] knowledge of Complainants’ SOMADERM mark “because it uses the disputed domain name in an attempt to lure Internet users to the Respondent’s site by creating confusion as to the identity, sponsorship, or affiliation of Respondent’s site.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. The trademark SOMADERM (“the Trademark”) has been used in respect of topical skin and nutraceutical products by one, other or both of Complainants;
2. the Trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 5,657,594, registered January 15, 2019, and Reg. No. 5,704,649, registered March 19, 2019 (“the Registrations”);
3. the disputed domain name was registered on July 27, 2021 and resolves to a website which offers for sale topical skin and nutraceutical products bearing the Trademark.
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 Complainants 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 Complainants have 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 Complainants’ 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Complaint is poorly reasoned with respect to both of those requirements.
It is well established by decisions under this Policy that a trademark registered by a complainant with a national authority is evidence of that complainant’s trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Here, Complainants rely upon the Registrations with the USPTO, a national trademark authority. However, the Registrations are not owned by either named complainant—rather the certificates for the Registrations exhibited to the Complaint show the owner to be another company, Natural Life Foods Corporation. There is no reference to that fact; Complainants merely state that by reason of a licence agreement they have “exclusive rights” to the Registrations.
Exhibited to the Complainant is a “Trademark License Agreement” between the named complainants. The agreement makes no mention of Natural Life Foods Corporation but the recitals to the agreement state that:
‘Xygenyx [Inc.] owns Licensed Trademarks attached hereto as Exhibit A. (“Licensed Trademarks”). In accordance with this Agreement, Xygenyx [Inc.] grants [New U Life Corporation] a royalty- free, worldwide, exclusive license to use the Licensed Trademarks. Xygenyx [Inc.] retains title and ownership of the Licensed Trademarks.”
The Licensed Trademarks include the Registrations.
Under the same Exhibit is a copy of a “Trademark Assignment” which transfers ownership of the Registrations from Natural Life Foods Corporation to Xygenyx Inc.. Both the Trademark License Agreement and the Trademark Assignment are effective December 30, 2019, albeit that they were executed at much later dates the following year.
That is the extent of the evidence and submissions in support of trademark rights. The Panel notes, first, that although Complainants assert use of the Trademark since 2018 there is insufficient evidence to establish common law trademark rights. As such, satisfaction of paragraph 4(a)(i) hinges on Complainants’ position vis-à-vis the Registrations.
The Trademark License Agreement makes it clear that Xygenyx Inc. is the licensor and New U Life Corporation is the licensee of the Trademark Registrations but there are no submissions as to whether a trademark licensee has trademark rights for the purpose of paragraph 4(a)(i) of the Policy. Nonetheless, the Panel notes the consensus view of UDRP panelists expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) which asks at paragraph 1.4: Does a trademark owner’s affiliate or licensee have standing to file a UDRP complaint? in answer to which it is said that:
1.4.1 A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint.
In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.
The Trademark License Agreement quite clearly grants an exclusive license to use the Trademark. The difficulty is that there is no evidence before the Panel that the transfer of ownership of the Registrations was recorded at the USPTO and so Xygenyx Inc.’s status appears to be that of an unrecorded assignee of the Trademark.
Accordingly, the statement that Complainants have “exclusive rights” to the Registrations is left unsupported. There is no evidence of actual use of the Trademark (and so no evidence of common law rights) by the licensed user and no evidence that the beneficial owner is the proprietor of the Trademark Registrations. It follows that there is no proof of rights in the Trademark by either named complainant.
The Panel would be justified in denying the Complaint at this point. However, panels have discretion to make limited enquiries of their own and, in this case, accessing the USPTO’s online trademark database, the Panel finds that the Registrations have in fact been recorded as assigned to Xygenyx Inc.
That being the case it was enough for the Complaint to have been filed nominating Xygenyx Inc. as the complainant. Nevertheless, given the statements in the WIPO Jurisprudential Overview 3.0, both have an entitlement to assert trademark rights. The Panel finds Complainants to have rights in the Trademark.
For the purposes of comparison of the disputed domain name with the Trademark, Complainants’ submission is that the domain name is misleading and is easily mistaken by the general public for the Trademark. That submission does not address the language of the Policy which requires either that the disputed domain name is identical or confusingly similar to the Trademark. The Panel reads the submission as a claim that the domain name and Trademark are confusingly similar. The Panel finds that they are—the gTLD, “.net”, can be disregarded (see, for example, Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”) and thereafter, the disputed domain name merely hyphenates that two, fairly transparent, elements of the Trademark (see, for example, Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
The Panel finds that Complainants have established the first aspect of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainants need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information identifies “Harumi Fujiwara” as the domain name registrant. Accordingly, there is no suggestion that Respondent might be commonly known by the domain name and there is no indication that Respondent has any trademark rights of its own in a corresponding term.
Complainants provide evidence that the domain name resolves to a website which shows the Trademark applied to goods of the kind sold by Complainants. The assertion is that those goods are offered for sale without Complainants’ authorization and may be counterfeit. In either case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy. Alternatively, the Trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) finding no bona fide offering of goods or legitimate noncommercial or fair use existed where respondent used the resolving website to sell products branded with complainant’s MERRELL mark, which were either counterfeit products or legitimate products of complainant being resold without authorization.).
The Panel finds that Complainants have made a prima facie case that Respondent has no rights or interests. The onus thus shifts to Respondent and in the absence of a Response, the Panel finds that Complainants have satisfied the second limb of the Policy.
Complainants must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that use of the domain name falls under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the Trademark. The use of the domain name is for commercial gain. The third element of the Policy is satisfied (see, for example, Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Forum May 29, 2002) finding that the respondent’s use of <compaq-broker.com> to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. As noted already, the Complaint is unclear as to the intended transferee. As best the Panel can interpret the Complaint, transfer should be to Complainants, jointly. Accordingly, it is ORDERED that the <soma-derm.net> domain name be TRANSFERRED from Respondent to Complainants as joint tenants.
Debrett G. Lyons, Panelist
Dated: December 21, 2021
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