23andMe, Inc. v. A. Kemper
Claim Number: FA1606001681113
Complainant is 23andMe, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is A. Kemper (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <23and.me>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2016; the Forum received payment on June 24, 2016.
On June 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <23and.me> 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 June 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@23and.me. Also on June 28, 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.
A timely Response was received and determined to be complete on July 15, 2016.
Additional Submissions were received from both parties in accordance with Supplemental Rule 7.
On July 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a personal genetics company, which connects individuals to their unique, paired set of 23 chromosomes. Complainant has more than one million customers worldwide. It offers downloadable publications on genetic testing, genotyping technologies, genetic screening, phenotyping, molecular analytics, and ancestry. Complainant filed a trademark application for 23ANDME in the USA on April 18, 2007 and the registration was granted on July 28, 2009. Complainant registered its marks in numerous countries around the world, including the European Union.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s registered mark. The disputed domain name simply turns the “ME” portion of the mark into a top level domain (“TLD”) by adding a period. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to make use of the 23ANDME mark in any manner. Respondent is currently using the disputed domain name to resolve to a parked page offering hyperlinks to third-party websites, some of which compete with Complainant. Respondent has offered the disputed domain name for sale to Complainant for in-excess of its out of pocket costs. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent has offered the disputed domain name for sale to Complainant for in-excess of its out of pocket costs. The disputed domain name resolves to a parked page offering hyperlinks to third-party websites, some of which compete with Complainant, from which Respondent presumably receives a pay per click fee. Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s rights in the 23ANDME mark. Further, Respondent has registered 187 domain names, some of which are almost identical to registered trademarks. Complainant cites UDRP precedents to support its position.
B. Respondent
According to Respondent, Complainant does not have a valid claim because it does not have a trademark for 23AND, and because it does not have a trademark in Montenegro, which is not a member of the European Union. The disputed domain name is made up of two parts, “23and” and the country code generic top level domain (“ccTLD”) for Montenegro “.me.” The “.me” ccTLD can only be used for personal use, as such, Complainant is not entitled to it. The Panel should not consider the ccTLD in determining confusing similarity. The “23and” portion of the domain is generic and Complainant does not have an exclusive right to it online.
Respondent states that it did not knowingly offer to sell the disputed domain name to Complainant. Complainant acted in bad faith by asking about an offer for the disputed domain name without revealing itself. Respondent had no intention to sell until asked by Complainant.
C. Additional Submissions
Complainant
Complainant reasserts its allegations as laid out in its complaint. Complainant rejects Respondent’s positions concerning the “.me” TLD/ccTLD being irrelevant for a Policy ¶ 4(a)(i) analysis, and alleges that a trademark anywhere in the world is sufficient to establish rights under the Policy. Respondent has registered a number of other domain names incorporating third party trademarks for sale. The disputed domain name is offered for sale on specialized web sites.
Respondent
Respondent admits that he has a variety of domains offered for sale, but that is not relevant for the present case. He is the CEO of a consulting company, offering computer and IT services. For this purpose, various domains have been registered, some of which were filed in Germany as trademarks. The disputed domain name was registered for a 23and Project not for selling the domain!
Further, says Respondent, Complainant did not register the disputed domain name during the trademark phase. Thus the .me registry released the domain in the sunrise phase to public registry. Complainant should have known that the disputed domain name could be important in the future, therefore worth protecting, and registered the domain. It did not do so, and cannot now use this procedure to obtain the disputed domain name.
Respondent states that he is not a grabber, not a dealer and does not make a living from domain sales.
Complainant owns rights in the mark 23ANDME with rights dating back to April 18, 2007.
The disputed domain name was registered on July 17, 2008.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The web site at the disputed domain name offers click-through ads to products and services that compete with those of Complainant. Further, Respondent is offering the disputed domain name for sale for a price in excess of out-of-pocket costs.
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.
Before examining the three elements of the Policy, the Panel will deal with two issues raised by Respondent.
Respondent alleges that, since Complainant did not register the disputed domain name earlier, it cannot now use this procedure to obtain the disputed domain name. But such is not the case: there are no time limits for initiating cases under the Policy. See Tom Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO Jul. 5, 2006) (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding … that the time frame within which the complainant brought the proceeding was of no consequential value).
Further, Respondent argues that Complainant is not entitled to the disputed domain name because it is a company and the ccTLD “.me” is reserved for individuals. But such is not the case: there are no restrictions on registrations within “.me”, as can be seen from the registration policies for that ccTLD. See also AOL Inc. v. John Michaels a/k/a 5050 Share, FA 1308890 (Forum Mar. 29, 2010) (transferring <mapquest.me> to complainant, a company).
Complainant has evidence of its registration of the 23ANDME mark with the USPTO (Reg. No. 3,661,355, filed April 18, 2007, registered July 28, 2009). Registration of a mark with the USPTO is adequate to establish a complainant’s rights in a mark even when respondent does not operate within the United States and/or the top-level domain is a ccTLD. See AOL Inc. v. John Michaels a/k/a 5050 Share, FA 1308890 (Forum Mar. 29, 2010) (the complainant’s trademark registration with the USPTO sufficiently established its rights to the mark MAPQUEST even though the domain at issue was <mapquest.me>); see also Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). Furthermore, once a valid trademark is issued, the date of protection for said mark stretches back to the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”).
The disputed domain name simply turns the “ME” portion of the mark into a TLD by adding a period. Respondent argues that the gTLD must not be considered when evaluating the confusing similarity of a mark to a domain name. But such is not the case. The rise of descriptive TLDs has created a new avenue for both business and cybersquatters alike to reflect marks in a domain name. The traditional view that a generic top level domain (“gTLD”) is irrelevant does not necessarily hold, in particular when a descriptive TLD can actually enhance a finding of confusing similarity between a mark and a dispute domain name. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLD's that reference goods or services offered under the registered mark may be taken into account); see also Securian Financial Group, Inc. v. me s/enom, FA 1595614 (Forum Jan. 16, 2015) (insertion of a period in place of a space between two words in the registered trademark, MINNESOTA LIFE, did not sufficiently distinguish the respondent’s domain name <MINNESOTA.LIFE>); see also Robert Half International Inc. v. Shawn Downey, FA 1603347 (Forum Mar. 11, 2015) (deleting spaces and adding a period did not avoid a finding of confusing similarity between <ROBERTHALF.INTERNATIONAL> and the mark ROBERT HALF INTERNATIONAL); see also DOMINO’S IP HOLDER LLC v. CJ Sculti, FA 1629479 (Forum Aug. 24, 2015) (insertion of a period did not sufficiently distinguish <DOMINOS.PIZZA> from complainant’s registered trademark DOMINOS PIZZA); see also Robert Downey Jr. v. Shashank Agarwal, FA 1581490 (Forum Nov. 10, 2014) (finding that the “.actor” addition to Complainant’s ROBERT DOWNEY JR. mark enhances the confusion in light of the fact that Complainant is a notable actor.). The fact that the present case concerns a ccTLD rather than a gTLD does not change the legal reasoning, because the ccTLD in question has adopted a dispute resolution policy which is identical to the UDRP. See BILD gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015) (the panel found the domain name <bildpl.us> confusingly similar to the registered trademark BILDPLUS, even though the domain had a ccTLD and two letters of the registered trademark were to the right of the dot). Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent contends that the disputed domain name is comprised of the common and generic terms “23” and “and” and as such cannot be found to be confusingly similar to Complainant’s mark. However, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent has not been given permission to use Complainant’s mark. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “A. Kemper” as the registrant of record. Past panels have held that, under such circumstances, a Respondent lacks rights to the disputed domain name under Policy ¶ 4(c)(ii). See I Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent correctly notes that the disputed domain name includes the common, generic terms “23” and “and”, but does not explain how that gives him legitimate rights, for example by offering products and services specifically related to the generic terms (e.g. somebody who sells soap might claim legitimate rights in a domain name containing that generic term, but Respondent provides no such explanation).
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant provides evidence showing that the resolving web site at the disputed domain name features competing hyperlinks, which divert Internet users who are seeking Complainant’s website to Respondent’s website. The Panel notes that some of the featured hyperlinks include “23andMe: DNA Testing,” and “DNA Test – 10% Off,” and “Project Manager Software.” Panels have found that a respondent’s use of competing and unrelated hyperlinks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel concludes that Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further finds that as Respondent here presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Further, Complainant has provided evidence that Respondent offered the disputed domain name for sale and, in response to a query from Complainant, asked for $50,000 for the disputed domain name. Past panels have found that a willingness to dispose of a domain name, or otherwise sell it for costs in excess of out of pocket expenses, can show a lack of Respondent’s rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent states that he registered the disputed domain name for a “23and Project”, but he provides no description of what such a project would be, nor does he explain how such a project would not be related to Complainant’s mark and activities. It is not obvious what sort of project would be associated with the words “23and”: indeed Respondent himself states that “23”and “and” are common generic terms. Consequently, the Panel finds that Respondent did not have a concrete, legitimate use in mind when he registered the disputed domain name.
As noted above, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent presumably receives referral fees through the use of the disputed domain name, and registered the disputed domain name to attract and mislead consumers for his own profit. Prior panels have found that hyperlinks are typically associated with “click-through” fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Accordingly, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Further, also as noted above, Respondent offers the disputed domain name for sale, and requested $50,000. Respondent argues that this does not constitute bad faith in the sense of the Policy because Complainant initiated the transaction, by offering to buy the disputed domain name. But such is not the case: past panels have found attempts to sell domains for prices in excess of the out-of-pocket costs to show bad faith under Policy ¶ 4(b)(i) even when Complainant initiates the offer. See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000); see also Vonage Holdings Corp. v. Michael Hodge, D2007-0336 (WIPO May 14, 2007) (complainant offered $1,500 for the domain from Respondent, but respondent refused and demanded $18,000 to transfer the domain). Further, Complainant has presented evidence showing that the disputed domain name has been listed for sale on specialized web sites. Past panels have determined that this evidences bad faith use under the Policy. See Securian Financial Group, Inc. v. me s/enom, FA 1595614 (Forum Jan. 16, 2015) (Since … Respondent’s general offer to sell the disputed domain name as promoted on the Sedo and DomainTools pages suggests Respondent’s bad faith, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(i)). Consequently, the Panel finds that Respondent has attempted to acquire more than out-of-pocket expenses, and it finds that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <23and.me> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 22, 2016
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