WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kenji Orito Yokoi Diaz v. Clayton Uehara Maricato

Case No. D2021-0932

1. The Parties

The Complainant is Kenji Orito Yokoi Diaz, Colombia, represented by Abello Abogados, Colombia.

The Respondent is Clayton Uehara Maricato, Colombia.

2. The Domain Names and Registrar

The disputed domain names <ykd.com.co>, <yokoikenji.co>, <yokoikenji.com.co>, <yokoikenjidiaz.com>, and <yokoikenji.net> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 10, 2021.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. On May 20, 2021, the Center received a email from the Respondent that does not contain a complete response to the Complaint, either as to the facts, the evidence, or the arguments thereto. On May 26, the Respondent sent another document outside the Response period established in the Policy.

The Center appointed Daniel Peña as the sole panelist in this matter on May 17, 2021. 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 Complainant is a natural person with the name of Kenji Orito Yokoi Diaz.

The Complainant’s pseudonym is Yokoi Kenji, which has been used to make his motivational presentations (through face-to-face and digital means) in which he wants his audience to take advantage of their abilities and talents to build a better society. In addition to this, he has dedicated his life, with care, discipline and passion, to promoting a message of motivation and unity in the personal life of each individual, also highlighting the important role that each one plays in society.

The Complainant has been recognized for holding conferences, forums, presentations, videos, books, audiobooks, and courses, among others, aimed at a diverse and integrated audience. The planning for his conferences, forums, presentations, videos, books, and courses, among others, are devised by the Complainant, fulfilling his mission’s purpose.

The Complainant has important national and international recognition and has been awarded various prizes. In addition, he is the director of the Tourism with Purpose Foundation that seeks to combat suicide.

The Complainant is the owner of the trademark YKD-YOKOI KENJI DIAZ granted by the Colombian Superintendence of Industry and Commerce via Certificate No. 626027, applied on August 17, 2017, dated August 28, 2019, currently valid until August 28, 2029, in the following classes of the International Nice Classification: 16, 25, 35, 38, 41, 43 and 45.

The disputed domain names were registered between November 24, 2017, and April 2 2018.

The Complainant and the Respondent seems to have had some short of a commercial and/or friendship relationship.

5. Parties’ Contentions

A. Complainant

The disputed domain names are all identical to the Complainant’s name, pseudonym, trade name and his registered trademark.

There is a confusion between the disputed domain names and the names, pseudonyms or trademarks and trade names of the Complainant.

When accessing the disputed domain name, the public could assume that they belong to the Complainant, who is not currently their title-holder.

The Respondent registering the disputed domain names by his own name exceeds his commercial functions, abusing his position and the trust placed in him by the Complainant.

The Respondent intends to prevent the Complainant from using its trademark in certain domain names with a fundamental objective of hindering commercial activity; thus, causing serious damage to the Complainant, in particular, preventing the marketing of webinar and/or online conferences. It is estimated by the Complainant that one hundred forty-five (145) applications have been received from companies in Colombia and Latin America to contract the lectures of the Complainant.

The Complainant and the Respondent have been friends for more than sixteen (16) years, and have had a commercial relationship since 2018, when the Complainant required a community manager with the goal of opening social networks to market his work.

Due to the personal trust that existed prior to the commercial relationship, the conditions of the commercial relationship between the Complainant and the Respondent were agreed verbally, based in a commission fee calculated on the profits.

The Complainant commissioned the Respondent to register the disputed domain names. Although the request to create these domain names was express, at no time was the Respondent authorized to become their owner. The Complainant assumed all the costs of the disputed domain names registrations, paying them for periods of two (2), three (3), five (5) and ten (10) years.

Once the commercial relationship ended, the Complainant sent a communication to the Respondent by which the reversion of the registration was requested. The Respondent, through his representatives, requested the sum of COP 700,000,000 (approximately USD 183,000) to transfer the disputed domain names.

The Respondent does not use the disputed domain names, and his only interest is to make an unjustified financial profit.

The Respondent has not fulfilled his obligation to revert the disputed domain names to the Complainant’s ownership. Instead, once the commercial relationship ended, the Respondent requested the Complainant an outstanding amount of money confirming his sole intention of taking financial advantage of the situation, having registered the domain names in bad faith by indicating he was their owner.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the Response due date. On May 28, 2021, the Respondent sent documents containing its contentions, but these were submitted outside the Response period established in the Policy.

6. Discussion and Findings

The Panel notes that the Respondent submitted its contentions, in English and Spanish, 13 days after the Response due date. The explanation for such a delay was that he had some problems with the emails because of his English. The Panel notes that a copy of the original Complaint submitted in Spanish was notified to the Respondent, and that English was the language of the Registration Agreement.

The Panel does not consider this communication a valid Response under the Policy since the delay is not justified, nor are there exceptional circumstances that justify it. However, even if the Panel were to consider the Respondent’s contentions, the Panel finds that the outcome of this decision would have remained the same.

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, which is recognizable in the disputed domain names. The Respondent’s incorporation of the Complainant’s trademark in full or in part in all the disputed domain names leads to the conclusion that the disputed domain names are confusingly similar to the Complainant’s trademark. Furthermore, the addition of the generic Top-Level Domains (“gTLDs”) “com” and “.net” and the country-code Top-Level Domain (“ccTLD”) “.co” is a technical requirement, and not sufficient to prevent a finding of confusing similarity.

The Panel is satisfied that the disputed domain names are confusingly similar to the Complainant’s trademark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names.

The Complainant claims that the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. In the course of a personal and commercial relationship with the Complainant, the Respondent has used the Complainant’s economic resources to register the disputed domain names. Despite having used Complainant’s funds for the registration and without an evidenced legitimate interest, the Respondent refused to return ownership of the disputed domain names unless the Complainant paid the Respondent a substantial sum of money.

The Respondent did not rebut the Complainant’s contentions and did not demonstrate any rights or legitimate interests in the disputed domain names.

Furthermore, the disputed domain names are not used.

There may be a dispute between the Parties regarding their (commercial or business) relationship, its scope, and its remuneration (if applicable), but, in the Panel’s opinion, nothing in this file shows rights or legitimate interests of the Respondent in the disputed domain names for the purposes of the Policy.

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names 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 and use of a disputed 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;

(iii) 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name.

According to the evidence presented by the Complainant, this Panel finds likely that, given the long personal relationship that existed between the Complainant and the Respondent, and that the Complainant has been using his pseudonym Yokoi Kenji to identify himself in his conferences, his products, and services, before the registration of the disputed domain names, the Respondent could not ignore that the disputed domain names would be confusingly similar to the Complainant’s name, and pseudonym. Noting the composition of the disputed domain names, the Panel finds likely, that these would create a likelihood of confusion with the Complainant, a confusion caused by the similarity to the real name, pseudonym and the name used in commerce by the Complainant.

Furthermore, the Panel notes the Complainant’s claim that the disputed domain names were registered following the Complainant’s instructions, and that the Complainant paid for their registration. In addition, the Panel notes that invoices related to the registration of the disputed domain names were invoiced to the Complainant. In this regard, on November 24, 2017, the Registrar sent to the Respondent’s email address a confirmation of the registration of the disputed domain names <yokoikenji.com.co> (for the duration of 5 years), <yokoikenji.net> (for the duration of 10 years), and <yokoikenji.co> (for the duration of 5 years). The Registrar sent such confirmation with the subject line “Kenji, your confirmation order is here”, and providing a client number with the text “Kenji Diaz – Client Number […]”, congratulating “Kenji for its first purchase with GoDaddy” (the email communication is in Spanish, and is translated into English by the Panel for the purposes of this decision). The Respondent forwarded this email communication to the Complainant on the same day. The Panel notes that on December 4, 2017, the Registrar sent to the Respondent the confirmation for the registration of the disputed domain name <yokoikenjidiaz.com>, which was addressed to “ClayTon Ton” but with the same client number that previously corresponded to “Kenji Diaz” (i.e. the Complainant). The Panel does not have access to the confirmation for the registration of the disputed domain name <ykd.com.co> (instead, an invoice regarding “G Suite” for this disputed domain name, addressed to the Complainant, was submitted). However, the Panel notes that the disputed domain names <yokoikenjidiaz.com>, and <ykd.com.co> were registered after the registration of the first three disputed domain names, which casts serious doubts on the Respondent’s intention when the Respondent changed the details of the account with the Registrar to its own details (but remaining with the same Client Number). In the circumstances of this case, the Panel finds on the balance of probabilities that the disputed domain names were registered by the Respondent under the request of the Complainant, probably with his resources, and with the likely intention of the Parties for the Complainant to be the actual owner of all the disputed domain names.

Regarding the use in bad faith of the disputed domain names, pointing to a parking page, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.

Furthermore, there is enough evidence on the record of this proceeding that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration.

Based on these factors, and in the absence of a rebuttal of these submissions, the Panel finds that the totality of the circumstances warrant a determination that the disputed domain names were registered and used in bad faith.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that disputed domain names <ykd.com.co>, <yokoikenji.co>, <yokoikenji.com.co>, <yokoikenjidiaz.com>, and <yokoikenji.net> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: May 29, 2021