WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enagic USA, Inc. v. Charlie Kalopungi / Moniker Privacy Services
Case No. D2011-0484
1. The Parties
The Complainant is Enagic USA, Inc. of California, United States of America, represented by Hahn & Bolson LLP of United States of America.
The Respondent is Charlie Kalopungi of Seychelles / Moniker Privacy Services of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <enagicwebsystems.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 16, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On March 17, 2011, Moniker Online Services, LC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2011providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 21, 2011.
The Center verified that the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2011.
The Center appointed Cherise M. Valles as the sole panelist in this matter on April 18, 2011. 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
The Complaint is based on the trademark ENAGIC owned by Enagic Co. Ltd., a Japanese Corporation. Enagic Japan is engaged in the business of manufacturing and selling water ionizers that can control the pH level of water. Enagic Japan registered the trademark ENAGIC with the United States Trademark and Patent Office as of February 8, 2005 with the registered number 2,925,640. The trademark ENAGIC is well known in the water ionizers industry due to its lengthy history in the industry. In 2003, Enagic Japan licensed the use of the trademark to the Complainant which is also owned by the same Oshiro family of Japan that owns Enagic Japan. On July 21, 2010, the Complainant obtained the domain name “enagicwebsystem.com” and launched a website with that name on August 2, 2010 in order to provide its distributors with information about its products and business.
Mr. Charles Kalopungi is listed as the registrant of the disputed domain name <enagicwebsystems.com>. The disputed domain name was created on September 9, 2010.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its amended Complaint filed on March 21, 2011, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is identical or confusingly similar to the licensed trademark of the Complainant. The disputed domain name differs only from the licensed trademark of the Complainant as it adds two non-distinctive, generic terms, namely, “web” and “systems”.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or authorized the Respondent to use the trademark ENAGIC in any form.
The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name should be considered as having been registered in bad faith as the Respondent knew or should have known of the trademark prior to registering the disputed domain name.
The Complainant requests the Panel to issue a decision finding that the disputed domain name <enagicwebsystem.com> be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw such appropriate inferences therefrom.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is based on the trademark ENAGIC which is owned by Enagic Japan. Enagic Japan has licensed use of the trademark ENAGIC to the Complainant since 2003 when the Complainant was incorporated in California, and as such, the Complainant has rights in the trademark. The disputed domain name is identical or confusingly similar to ENAGIC as the domain name is composed of the non distinctive generic terms “web” and “systems”. As held in Nintendo of America Inc. v. Fernando Sascha Guiterrez, WIPO Case No. D2009 -0434, the mere addition of such non distinctive generic terms does not negate the confusing nature of the disputed domain name.
As an aside, the Panel notes, on July 21, 2010, the Complainant obtained the domain name <enagicwebsystem.com> and launched a website with that domain name. The only difference between the disputed domain name and the Complainant’s domain name is one letter – the letter “s”.
In the light of the foregoing, the Panel finds that the disputed domain name is identical (with the sole exception of the letter “s”) to a licensed trademark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s business name, as it is well-known in the industry. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name.
The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead, the evidence suggests that the Respondent has intentionally chosen a domain name identical to the Complainant’s business name and mark in order to make commercial use of the Complainant’s business name. The evidence indicates that when one clicks on the disputed domain name, one is diverted to sponsored links to generate pay-per-click advertising revenues. In the circumstances, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its business name is well-known and that the disputed domain name incorporates in full the business name in which the Complainant has licensed trademark rights (with the sole exception of one letter) and that the Respondent has no relationship to the Complainant. The Complainant has provided evidence to the Panel that it has sent cease and desist letters to the respondent and the respondent did not respond to them, see, RRI Financial, Inc v. Ray Chen, WIPO Case No. D2001-1242.
The Respondent employs the Complainant’s trademark ENAGIC in its entirety in the disputed domain name so as to attract Internet users to the Respondent’s website for commercial gain. The Complainant is a well-known company in the industry of water ionizers and the Respondent is attempting to attract Internet users to its website in order to generate pay-per-click advertising revenue. Such action is an indication of bad faith on the part of the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <enagicwebsystems.com> be transferred to the Complainant.
Cherise M. Valles
Dated: May 1, 2011