DECISION

 

LifeBEAM Technologies, Ltd v. Nileshkumar Lakhani

Claim Number: FA1711001757327

 

PARTIES

Complainant is LifeBEAM Technologies, Ltd (“Complainant”), represented by Eugene Rome of Rome & Associates, A.P.C., California, USA.  Respondent is Nileshkumar Lakhani (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lifebeam.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.

 

On November 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lifebeam.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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2017 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@lifebeam.com.  Also on November 8, 2017, 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 November 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant is a global research and development corporation established in 2011 that provides computer software and related services in the form of wearable biometric monitoring technology. Complainant registered the LIFEBEAM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,091,605, registered Nov. 29, 2016). See Compl. Annex D. Respondent’s <lifebeam.com> domain name is identical to Complainant’s mark as it merely adds the generic top-level domain

 (“gTLD”) “.com.”

2.    Respondent has no rights or legitimate interests in the <lifebeam.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Complainant previously used the <lifebeam.com> website to promote its own services prior to Respondent’s registration of the domain name soon after it expired. See Compl. Annex I (historical archive for the domain name at issue). Further, Respondent has shown no evidence of using or making any demonstrable preparations to use the resolving domain corresponding to the domain name in connection with a bona fide offering of goods or services. See Compl. Annex K (screenshot of error message on the resolving domain). Additionally, Respondent’s willingness to engage in the sale of the domain name helps to establish a lack of rights and legitimate interests. See Compl. Annex F (email thread between Complainant and Respondent).

3.    Respondent registered and uses the <lifebeam.com> domain name in bad faith. Respondent registered the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. See Compl. Annex F. Respondent also uses the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Additionally, Respondent opportunistically registered the registered the <lifebeam.com> domain name promptly after Complainant’s registration lapsed. See Compl. Annex I. Further, Respondent fails to make any active use of the domain name, as the resolving webpage shows no more than an error message. See Compl. Annex K. Finally, Respondent knew or should have known of Complainant’s rights in the LIFEBEAM mark given the registration of the domain name almost immediately after Complainant’s registration in the domain name lapsed. See Compl. Annex I.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <lifebeam.com> domain name is confusingly similar to Complainant’s LIFEBEAM mark.

2.    Respondent does not have any rights or legitimate interests in the <lifebeam.com> domain name.

3.    Respondent registered or used the <lifebeam.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

 

Identical and/or Confusingly Similar

Complainant claims it registered the LIFEBEAM mark with the USPTO (e.g. Reg. No. 5,091,605, registered Nov. 29, 2016). See Compl. Annex D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel may find that Complainant has established rights in the LIFEBEAM mark.

 

Complainant next argues that Respondent’s <lifebeam.com> domain name is identical to Complainant’s mark as it merely adds the generic top-level domain

(“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that the <lifebeam.com> domain name is identical to the LIFEBEAM mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)

(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain

names.”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <lifebeam.com> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Nileshkumar Lakhani” as the registrant.  See Compl. Annex G. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LIFEBEAM mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <lifebeam.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant further argues that it previously owned and used the <lifebeam.com> domain name to promote its own services prior to Respondent’s registration of the domain name soon after it expired. Registering a domain name previously owned by a complainant can indicate a lack of rights and legitimate interests. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… 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.”). Complainant provides a historical archive for the resolving page located at the disputed domain name, which appears to contain content associated with Complainant’s claimed services. See Compl. Annex I. Accordingly, the Panel finds that Complainant previously owned the domain name at issue, and use that as evidence to hold that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

 

Additionally, Complainant contends that the disputed domain name resolves in a website that lacks any content. Failure to make active use of an identical or confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant provides a screenshot of the current webpage located at the disputed domain name, which contains the message “SORRY! If you are the owner of this website, please contact your hosting provider.” See Compl. Annex K. As such, the Panel finds that Respondent fails to actively use the disputed domain name, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Finally, Complainant claims that Respondent offers the disputed domain name for sale. Offering a confusingly similar domain name for sale to the public can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides an email chain between the Complainant and Respondent, which shows Complainant making a $5,000.00 offer to purchase the domain name, and Respondent saying that amount is not enough to purchase. See Compl. Annex F. The Panel therefore agrees and finds that Respondent offers the disputed domain name for sale, indicative of possessing no rights and legitimate interests under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent engaged in negotiations to sell the <lifebeam.com> domain name to Complainant. Offering a confusingly similar domain name for sale can evince bad faith registration Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). As noted previously, Complainant provides an email thread between Complainant and Respondent evidencing the negotiations that took place between the two parties. See Compl. Annex F. Accordingly, the Panel uses Respondent’s offering of the domain name for sale directly to the Complainant as evidence of bad faith registration.

 

Further, Complainant contends that Respondent acted in bad faith by unfairly commercially benefiting from the goodwill associated with Complainant’s trademark. Using a complainant’s mark in a domain name for the purpose of trading upon its reputation and goodwill for commercial gain can evince bad faith under Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant does not make any claims as to how Respondent attempts to commercially benefit, other than by selling the domain name to Complainant. See Compl. Annex F. The Panel agrees Respondent registered the domain name to capitalize on Complainant’s notoriety for commercial gain, and the Panel holds that Respondent registered the <lifebeam.com> domain name in bad faith.

 

Additionally, Complainant alleges that Respondent opportunistically registered the registered the <lifebeam.com> domain name promptly after Complainant’s registration lapsed. A finding of opportunistic bad faith and evidence of a complainant previously holding rights in a domain name may be used to establish a finding of bad faith under Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”); see also Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). Complainant alleges it held the registration to the domain name until July, 2017, when it inadvertently allowed the domain name’s registration to lapse. Complainant provides screenshots of the content previously located at the domain name prior to the registration by Respondent. See Compl. Annex I. As such, if the Panel agrees that Respondent opportunistically registered the domain name after Complainant allowed the registration to lapse, then the Panel holds that Respondent registered the domain name in bad faith.

 

Moreover, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Complainant provides a screenshot of the current webpage located at the disputed domain name, which contains the message “SORRY! If you are the owner of this website, please contact your hosting provider.” See Compl. Annex K. The Panel agrees that Respondent does not make an active use of the domain name, and thus registered and uses the disputed domain name in bad faith.

 

Finally, Complainant claims that Respondent knew or should have known of Complainant’s rights in the LIFEBEAM mark. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the LIFEBEAM mark given the registration of the domain name almost immediately after Complainant’s registration in the domain name lapsed. See Compl. Annex I. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lifebeam.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  December 13, 2017