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#EmLife .com : Common law trademark used in grabbing a 1996 #domain registration

ZFBot

The domain name EmLife.com was registered in 1996, and twenty-three years later, it was lost via the UDRP process.

The Complainant was EMindful Inc., a company that asserted common law rights to the EM LIFE mark; that’s a weak approach, as opposed to a registered trademark. What’s even more strange, is that these claimed rights go back to 2015, a full 19 years after EmLife.com was registered.

EMindful Inc., provides online education services in health-related topics and life coaching including meditation and mindfulness.

There was no response by the Respondent in this case, and the sole panelist at the National Arbitration Forum, Nicholas J.T. Smith, delivered a stern ruling using an antiquated approach, in our opinion, about what constitutes bona fide use of a domain:

“The Domain Name is presently inactive but Complainant’s evidence establishes that between 2016 and the commencement of the proceeding the Domain Name resolves to a website (“Respondent’s Website”) that purported to offer services, including meditation and mindfulness services, that directly competed with Complainant’s services, and also displayed various pay-per-click links.  Furthermore, Complainant’s evidence also strongly suggests that the contact details on Respondent’s Website are false and the entity purporting to offer the services on Respondent’s Website is not a legitimate entity.  In circumstances where the links and services have no connection to any descriptive meaning inherent in the Domain Name, the use of a domain name to sell competing goods or services or to collect revenue through advertisements is not a bona fide offering under the Policy ¶¶ 4(c)(i) or (iii).  “

There are claims that the domain’s WHOIS is invalid, and that the domain is being used for phishing purposes – at least, that’s how it’s categorized by a web browser’s security settings.

The decision was to transfer the domain EmLife.com to the Complainant. Full details on this decision follow:

EMindful Inc. v. Yao Chang

Claim Number: FA1901001825435

PARTIES

Complainant is EMindful Inc. (“Complainant”), represented by Allison R. Imber of Allen, Dyer, Doppelt & Gilchrist, P.A., Florida, USA. Respondent is Yao Chang (“Respondent”), Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emlife.com> (“Domain Name”), registered with GoDaddy.com, LLC.

PANEL

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.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 16, 2019; the Forum received payment on January 16, 2019.

On January 17, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emlife.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 January 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2019 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@emlife.com. Also on January 24, 2019, 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 February 15, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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

Complainant, EMindful Inc., provides online education services in health-related topics and life coaching including meditation and mindfulness. Complainant has common law rights in the EM LIFE mark arising from its use since September 2015. Respondent’s <emlife.com> domain name is identical to Complainant’s EM LIFE mark because the Domain Name incorporates the EM LIFE mark in its entirety and add a “.com” generic top-level domain (“gTLD”).

Respondent lacks rights and legitimate interests in the <emlife.com> domain name because Respondent is not commonly known by the Domain Name and is not authorized or permitted to use Complainant’s EM LIFE mark in any fashion. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial fair use. Rather, Respondent uses the Domain Name to pass off as Complainant, both to offer competing services and in order to generate click-through revenue from advertisements.

Respondent registered and uses the <emlife.com> domain name in bad faith. Respondent uses the Domain Name to offer services that are directly competing with Complainant’s. Respondent also hosts third party advertisements on the website that the Domain Name resolves to. Respondent also attempted to hide its identity through a privacy service. Further, Respondent had actual knowledge of Complainant and its EM LIFE mark as it traded off Complainant’s goodwill in order to offer its services.

FINDINGS

Complainant holds trademark rights for the EM LIFE mark. The Domain Name is confusingly similar to Complainant’s EM LIFE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used of the 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).

Identical and/or Confusingly Similar

Complainant has common law rights in the EM LIFE mark. Common law rights can be established through secondary meaning per Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). The Panel is satisfied from Complainant’s evidence (including copies of its website, samples of e-mails, advertising and evidence of customer base) that Complainant’s use of the EM LIFE mark since September 2015 is sufficient to establish secondary meaning in that mark.

The Panel finds that the that the <emlife.com> domain name is identical to Complainant’s EM LIFE mark as it consists of the EM LIFE mark with the addition the generic top-level domain (“gTLD”) “.com”. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the EM LIFE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Yao Chang” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

The Domain Name is presently inactive but Complainant’s evidence establishes that between 2016 and the commencement of the proceeding the Domain Name resolves to a website (“Respondent’s Website”) that purported to offer services, including meditation and mindfulness services, that directly competed with Complainant’s services, and also displayed various pay-per-click links. Furthermore, Complainant’s evidence also strongly suggests that the contact details on Respondent’s Website are false and the entity purporting to offer the services on Respondent’s Website is not a legitimate entity. In circumstances where the links and services have no connection to any descriptive meaning inherent in the Domain Name, the use of a domain name to sell competing goods or services or to collect revenue through advertisements is not a bona fide offering under the Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel notes that if Respondent’s registration of the <emlife.com> domain name predates Complainant’s first claimed rights in the EM LIFE 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 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.”).

The Domain Name was first registered by November 26, 1996. Complainant’s first use of the EM LIFE Mark took place in September 2015. However, it is unclear whether the present Respondent has held the Domain Name since 1996 or whether it acquired it subsequent to Complainant’s first use of the EM LIFE Mark.

The date on which the current registrant acquired the Domain Name is the relevant date in assessing bad faith. Paragraph 3.9 of the “WIPO Overview 3.0” states that “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”. Paragraph 3.9 also states that “In cases where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration; respondent failure to do so has led panels to infer an attempt to conceal the true underlying registrant following a change in the relevant registration.”

At all relevant times, the publically available ownership of the Domain Name has been masked by a privacy service so it has not been possible to determine conclusively when Respondent acquired the Domain Name. A review of the materials in the Complaint identifies that in July 2016 the registrar of the Domain Name changed, as did the proxy service used to hide the identity of the underlying owner. At the same time, the manner in which the Domain Name was used changed, from a pay-per-click site to the Respondent’s Website, a website purporting to offer similar services to Complainant under the EM Life Mark. Such evidence amounts to a credible claim that Respondent acquired the Domain Name on or around July 2016. Neither the Respondent, nor the Registrar (following further enquiries by the Forum) has provided any information to suggest that Respondent was the registrant of the Domain Name prior to July 2016 and hence the Panel infers, from the limited evidence before it, that Respondent registered the Domain Name/acquired the registration of the Domain Name in July 2016, postdating Complainant’s earliest use of the EM LIFE mark

The Panel finds on the balance of probabilities that, at the time the Respondent registered the Domain Name, July 2016, Respondent had actual knowledge of Complainant’s EM LIFE mark. There is no obvious explanation, nor has one been provided, for an entity to acquire a domain name that exactly reproduces the EM LIFE Mark and redirect it to a site that offers services in direct competition with Complainant other than to take advantage of Complainant’s reputation in the EM LIFE Mark. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s EM LIFE Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that offers competing services and features pay-per-click links. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).

The Panel finds Complainant has satisfied 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 <emlife.com> domain name be TRANSFERRED from Respondent to Complainant.

Nicholas J.T. Smith, Panelist

Dated: February 20, 2019


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