The Covid Detection Foundation v. Jinsoo Yoon
Claim Number: FA2212002023611
Complainant is The Covid Detection Foundation (“Complainant”), USA, represented by Sam E. Iverson of Pillsbury Winthrop Shaw Pittman LLP, California, USA. Respondent is Jinsoo Yoon (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <virufy.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on December 12, 2022; Forum received payment on December 12, 2022.
On December 13, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <virufy.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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@virufy.com. Also on December 13, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, The Covid Detection Foundation, is a research organization for the detection of COVID-19 using artificial intelligence. Complainant has rights in the VIRUFY mark through common law and trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 6,405,363, which was registered on June 29, 2021). The disputed domain name is nearly identical to the VIRUFY mark as it merely appends a generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has never authorized Respondent to use the VIRUFY mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial use as it has never resolved to an active site. Further, it is not possible for the disputed domain name to be legitimately used because it infringes on Complainant’s mark. Lastly, Respondent intentionally uses the domain name to divert customers for commercial gain.
iii) Respondent registered and uses the disputed domain name in bad faith by registering the name, with false WHOIS information, after Complainant first used the VIRUFY mark and closely after Complainant’s founding and registration of its <virufy.org> domain name. Respondent also fails to make active use of the name. Further, Respondent intended to mislead and divert consumers for commercial gain by selecting a domain name confusingly similar to a fanciful mark and causing confusion as to the source of the domain name. Finally, Respondent has a pattern of cybersquatting and acted with actual knowledge of Complainant’s rights in the VIRUFY mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 20, 2020.
2. Complainant has established rights in the VIRUFY mark through trademark registration with the USPTO (Reg. No. 6,405,363, registered on June 29, 2021).
3. The disputed domain name’s resolving website displays hyperlinks of content unrelated to Complainant for “Funds,” “Ashes Tickets Headingley,” and “Cricket Carrier” links, each of which redirects users to another webpage.
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”).
Complainant claims rights in the VIRUFY mark through both common law and trademark registration with the USPTO (Reg. No. 6,405,363, which was registered on June 29, 2021). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As Complainant provides evidence of trademark registration with the USPTO, the Panel finds that Complainant has established rights in the VIRUFY mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <virufy.com> is confusing similar or nearly identical to its VIRUFY mark. gTLDs have been found irrelevant when analyzing identity and similarity under Policy ¶ 4(a)(i). The disputed domain name incorporates the mark in its entirety while merely adding the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusing similar to Complainant’s VIRUFY mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the VIRUFY mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for the disputed domain name lists the registrant as “Jinsoo Yoon.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the VIRUFY mark. Therefore, the Panel finds Respondent is not commonly known by, and lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not actively using the disputed domain name. Complainant provides a screenshot of the disputed domain name’s resolving website, which displays hyperlinks of content unrelated to Complainant. Use of the domain name to host competing and/or unrelated hyperlinks does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as 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).”); see additionally Team Health, LLC v. Super Privacy Service LTD c/o Dynadot, FA2001001878451(Forum Jan. 13, 2020) (finding the display of generic links such as “Employee Health Insurance” and “Employee Health Benefits” was not a bona fide offering of goods or services or a legitimate noncommercial or fair use under UDRP Policy ¶¶ 4(c)(i) or (iii)). The Panel finds that the display of generic links by the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial of fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the registration of the disputed domain name predates Complainant’s first claimed rights in the VIRUFY mark. If a respondent’s registration of a domain name predates Complainant’s first claimed rights in Complainant’s mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Specifically, Complainant’s VIRUFY mark was not registered until June 29, 2021, after Respondent registered the disputed domain name on April 20, 2020. However, previous panels have found that a complainant obtains protected rights in a mark upon application for trademark registration. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). Complainant’s application was filed on June 18, 2020, which predates the registration of the disputed domain name. The Panel further notes that Respondent registered the disputed domain name shortly after the foundation of Complainant in March 2020 and Complainant’s commencement of use of VIRUFY mark on April 8, 2020. Therefore, the Panel finds that Respondent’s intent in registering the disputed domain name was to unfairly capitalize on Complainant’s nascent (as yet unregistered) trademark rights following Complainant’s filing of the trademark application for the VIRUFY mark.
Complainant argues that Respondent has a pattern of bad faith use and registration due to prior UDRP proceedings. A history of adverse UDRP proceedings may indicate a pattern of bad faith use and registration and support a finding of bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant has provided several citations where “Jinsoo Yoon” was the respondent. The Panel notes that 21 of Respondent’s 23 past UDRP cases resulted in transfer. The Panel finds that Respondent has engaged in a pattern of bad faith, and thus Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant claims that Respondent fails to make active use of the disputed domain name which further evinces bad faith. As previously noted, Complainant provides a screenshot of the resolving website, which displays hyperlinks of content unrelated to Complainant. Hosting competing or unrelated hyperlinks for financial gains is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”); see also For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see additionally HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine, FA 1789019 (Forum July 3, 2018) (“Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an “Affiliate Program” in which users are redirected to job-oriented websites such as “Snagajob” and “Monster.” Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).”). Here, the Panel notes that the disputed domain name’s resolving website hosts hyperlinks for “Funds,” “Ashes Tickets Headingley,” and “Cricket Carrier” links, each of which redirects users to another webpage. Therefore, the Panel finds Respondent’s bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv).
Lastly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the VIRUFY mark at the time of registering the disputed domain name. Complainant suggests the timing of registration and incorporation of its distinctive and fanciful VIRUFY mark shows Respondent’s actual knowledge. The Panel notes that disputed domain name was registered within a month after Complainant was founded and Complainant registered its <virufy.org> domain name. The Panel infers, due to the timing of Complainant’s mark that Respondent had knowledge of Complainant’s rights in the VIRUFY mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <virufy.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 7, 2023
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