The Chinese registrant of the domain WithU.com failed to respond to the UDRP filed against the domain.
Registered in 1998, WithU.com became the target of WithU Holdings Limited, United Kingdom – the Complainant in this case. They asserted rights to a composite design and word mark that incorporates WITHU.
The sole panelist at the WIPO had a different opinion, citing the domain’s age:
“Although Complainant has established rights in the term “withu” as composite word and design mark, there is no question that Respondent registered the disputed domain name over ten years before Complainant’s earliest priority date.”
It’s yet another case where the domain’s registration timestamp – as opposed to a domain that dropped and became available again – delivers a decision favoring the Respondent, due to seniority against a mark.
Full details on the decision for WithU.com follows.
The domain transfer was denied.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WithU Holdings Limited v. Qian Jin
Case No. D2020-23441. The Parties
Complainant is WithU Holdings Limited, United Kingdom, represented by Fieldfisher LLP, United Kingdom.
Respondent is Qian Jin, China.
2. The Domain Name and Registrar
The disputed domain name <withu.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant, a company based in in the United Kingdom, is the owner of a smartphone application called WithU for use in meeting fitness goals. Complainant owns registrations for the term “withu” as composite word and design marks. These include United Kingdom Registration No. 3443253 (registered February 7, 2020) and International Registration No. 1530795 (registered March 9, 2020). Complainant’s earliest priority date for its trademark registrations is November 11, 2019. Complainant owns the registration for the domain name <withutraining.com>, which it uses to connect to a website from which it offers consumers information about its services.
The disputed domain name <withu.com> was registered on July 12, 1998. Respondent has no affiliation with Complainant. Respondent has had the URL associated with the disputed domain name resolve to a parked webpage, that was inactive as of the filing date of the Complaint.
5. Parties’ Contentions
A. Complainant
Complainant contends that (i) the disputed domain name <withu.com> is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it is using its WITHU mark for goods and services related to fitness. Complainant further contends that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith. Acknowledging that Respondent registered the disputed domain name over ten years before Complainant’s earliest priority date, Complainant contends, nevertheless that Respondent registered the disputed domain name “with the hope that they would be able to sell it for a profit to the owner of a trademark in the future”. Complainant further refers, in this regard, to a UDRP dispute previously determined against Respondent, see ZocDoc, Inc. v. Qian Jin, WIPO Case No. DCO2011-0029.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <withu.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates the term “withu”, which is the dominant literary element in Complainant’s registered trademark.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, Respondent has had the URL associated with the disputed domain name resolve to a parked webpage, that was inactive as of the filing date of the Complaint. Although a passive website does not necessarily shield a respondent from a finding of bad faith, a panel must examine “the totality of the circumstances”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), Section 3.3.
In this case, although Complainant has established rights in the term “withu” as composite word and design mark, there is no question that Respondent registered the disputed domain name over ten years before Complainant’s earliest priority date. Complainant contends, nevertheless that Respondent registered the disputed domain name “with the hope that they would be able to sell it for a profit to the owner of a trademark in the future”. Complainant further refers, in this regard, to a UDRP dispute previously determined against Respondent, see ZocDoc, Inc. v. Qian Jin, supra. That case is distinguishable, however, since the undisputed facts showed that the complainant in that case had pre-existing rights to a mark that was later incorporated into a domain name by Respondent, and which Respondent was using to redirect consumers, presumably for Respondent’s own commercial gain. With those distinctions, that case is inapposite to this proceeding.
On the balance, the Panel finds that there is insufficient evidence that Respondent registered and has used the disputed domain name in bad faith. Therefore, the Panel finds that Complainant has not established the necessary third element, in accordance with paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, the Complaint is denied. This denial is without prejudice to any claims that Complainant may pursue with any national court or other proceeding.
Lorelei Ritchie
Sole Panelist
Dated: October 22, 2020
