New U Life Corporation and Xygenyx Inc. v. Nguyen Van Dan / Van Dan
Claim Number: FA2305002046351
Complainant is New U Life Corporation and Xygenyx Inc. (“Complainant”), represented by Vanessa B. Pierce, California, USA. Respondent is Nguyen Van Dan / Van Dan (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <somadermchinhhang.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 26, 2023; Forum received payment on May 26, 2023. The Complaint was submitted in Japanese and English.
On May 30, 2023, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <somadermchinhhang.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.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 June 5, 2023, Forum served the Japanese and English versions of the Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of June 26, 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@somadermchinhhang.com. Also on June 5, 2023, the Japanese and English 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 July 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in the Japanese language, thereby making the language of the proceedings 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 the English language.
PRELIMINARY ISSUE : MULTIPLE COMPLAINANTS
There are two named Complainants in this matter: New U Life Corporation and Xygenyx Inc. Xygeneyx Inc. is the owner of the SOMADERM mark at issue, which it licenses to New U Life Corporation per a Trademark Licensing Agreement. See Compl. Ex . A.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants as the named Complainant Xygeneyx Inc. is the registered owner of the SOMADERM mark at issue, which it licenses to the named Complainant New U Life Corporation by means of the a Trademark Licensing Agreement referred to and established. See Compl. Ex . A.
The Panel will therefore treat them both as a single entity in this proceeding, giving them standing to bring the proceeding.
For ease of reference the Complainants will be collectively referred to as “Complainant” which therefore encompasses both of the named Complainants.
A. Complainant
Complainant made the following contentions.
Complainant’s business deals in the sale of topical skin and nutraceutical products. Complainant submits that it has rights in the SOMADERM mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,657,594, registered January 15, 2019). See Compl. Ex. C. The <somadermchinhhang.com> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name incorporates the entirety of the Complainant’s SOMADERM mark with the addition of the generic word “chinhhang” as well as the generic top level domain (“gTLD”) “.com”.
Respondent has no legitimate interests in the <somadermchinhhang.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the SOMADERM mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name for the unauthorized sale of Complainant’s products.
Respondent registered and uses the <somadermchinhhang.com> domain name in bad faith. Respondent is creating confusion as to its identity to sell Complainant’s SOMADERM branded products without authorization. Respondent made use of a privacy shield. Lastly, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SOMADERM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Each of the named Complainants is a United States company engaged in the supply of topical skin and nutraceutical products.
2. Complainant has established its rights in the SOMADERM mark (e.g. Reg. No. 5,657,594, registered January 15, 2019) based upon its registration of the mark with the USPTO.
3. Respondent registered the <somadermchinhhang.com> domain name on March 31, 2023.
4. Respondent has caused the disputed domain name to be used for the unauthorized sale of Complainant’s products showing that it has no right or legitimate interest in the domain name and that it registered and uses the domain name in bad faith.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SOMADERM mark (e.g. Reg. No. 5,657,594, registered January 15, 2019) based upon registration with the USPTO. See Compl. Ex. C. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SOMADERM mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SOMADERM mark Complainant submits that Respondent’s <somadermchinhhang.com> domain name is identical or confusingly similar to Complainant’s mark. The addition of generic words as well as a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Here, the disputed domain name incorporates the entirety of the Complainant’s SOMADERM mark with the addition of the generic word “chinhhang” as well as the “.com” gTLD. As such, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s SOMADERM mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SOMADERM trademark and to use it in its domain name in its entirety, adding only the generic word “chinhhang” which cannot negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <somadermchinhhang.com> domain name on March 31, 2023;
(c) Respondent has caused the disputed domain name to be used for the unauthorized sale of Complainant’s products showing that it has no right or legitimate interest in the domain name and that it registered and uses the domain name in bad faith;
(d) Respondent has engaged in this activity without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <somadermchinhhang.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the SOMADERM mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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)”). The WHOIS information for the disputed domain name lists the registrant as “Nguyen Van Dan,” and there is no other evidence to suggest that Respondent was authorized to use the SOMADERM mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <somadermchinhhang.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is using the disputed domain name for the unauthorized sale of Complainant’s products. The use of a disputed domain name for the sale of unauthorized products does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant has tendered in evidence screenshots of the Respondent’s resolving website. See Compl. Ex. F. As the Panel agrees, it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <somadermchinhhang.com> domain name in bad faith. It is apparent from the evidence that Respondent has established a website and is creating confusion as to the identity, sponsorship, or affiliation of that website in order to lure internet users to it and sell Complainant’s SOMADERM branded products to them without any authorization to do so. Luring internet users to an infringing website to sell unauthorized goods indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screenshots of the Respondent’s resolving website. See Compl. Ex. F. Thus, the Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent uses a privacy service to shield its identity and elude enforcement efforts by the legitimate trademark owner. Such use of a privacy shield is evidence of bad faith per Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, the WHOIS information for the <somadermchinhhang.com> domain name displays the use of a privacy service. See WHOIS information. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had knowledge of Complainant’s rights in the SOMADERM mark at the time of registering the <somadermchinhhang.com> domain name and that this shows bad faith registration. If Respondent’s knowledge is actual knowledge, it can be found to demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) To support this submission, Complainant points to the fact that Respondent uses the <somadermchinhhang.com> domain name for unauthorized sales of Complainant’s SOMADERM branded products. As such, the Panel finds that Respondent had actual knowledge of Complainant’s right in its mark and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SOMADERM mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <somadermchinhhang.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 9, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page