WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enagic HK Co. Ltd. v. Registration Private, Domains By Proxy, LLC / Enagic International
Case No. D2021-1191
1. The Parties
The Complainant is Enagic HK Co. Ltd., China, represented by Vutts & Associates LLP, India.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Enagic International, India, represented by Arun C. Mohan and K Venkatesan, India.
2. The Domain Name and Registrar
The disputed domain name <enagic.global> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, the Registrar 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 April 22, 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 22, 2021. The Respondent sent an email communication to the Center on April 26, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Response was filed with the Center on May 16, 2021. The Complainant filed Supplemental Filings on May 20, 2021.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 3, 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 manufactures and markets water filtration machines and water ionization systems for alkalization of water. Its other business areas include soaps, teas, health supplements and wild turmeric products. The Complainant owns the trademark ENAGIC and has Indian trademark registration No. 2077724, dated December 30, 2010 for its device mark in classes 7, 10, and 35. Complainant also has trademarks registered in many jurisdictions including Japan, European Union, Canada, Germany, and the United States of America. The Complainant owns the domain names <enagic.com> and <enagic.co.in> reflecting its trademark.
The Respondent was incorporated in 2016 and adopted the device trademark “Enagic with device of human body” claiming use since 2015. The Respondent obtained Indian trademark registrations for its device mark under trademark numbers 3191718 and 3191719, in classes 35 and 11 respectively, dated February 23, 2016 for water purification and treatment machine parts among others. The Respondent registered the disputed domain name on July 25, 2019. The disputed domain name is redirected to the website “www.webideator.com”.
Before starting these proceedings, the Complainant filed revocation petitions against the Respondent’s trademark registrations. Favorable orders were given allowing the petitions in both these cases: i) Energic HKCo. Ltd v. Enargic International LLP & Ors., ORA/07/2020/TM/AMD, July 30 2020 for interim stay on operation of the registration of the Respondent’s mark and ii) Energic HKCo. Ltd v. Enargic International LLP & Ors., ORA/1/2021/TM/AMD, February 12, 2021 for interim stay on operation of the registration of the Respondent’s mark.
5. Parties’ Contentions
The Complainant states it is a prior adopter of the trademark ENAGIC, which is a coined1 mark, that it has used continuously and extensively for over four decades. The Complainant states it was established in 1974 and commenced using the trademark internationally from the year 1990 and in the Indian market from 2015. The Complainant states that its mark is highly distinctive and it is a pioneer and innovator in alkaline water ionization technologies. Due to maintaining high standards, it has numerous recognitions and certifications such as, ISO 9001 for Quality Management, ISO 14001 for Environmental Standards, ISO 13285 for Providing Medical Devices and related services that meet consumer and regulatory requirements.
The Complainant states that it has a presence in twenty-three countries and is slated to enter about twenty other countries. In India it operates through it licensee, Enagic India Kangen Water Pvt. Ltd. The mark and its variants are promoted widely by the Complainant, with a significant online presence including on social media platforms such as Facebook, Twitter and Instagram. The Complainant asserts that online searches conducted on search engines like Google, Yahoo and Bing, show the predominance of the Complainant’s association with its mark, establishing its prior rights. “Enagic” is also part of its corporate name and its rights in the mark have been recognized in other legal proceedings including the case Enagic USA, Inc. v. Charlie Kalopungi / Moniker Privacy Services, WIPO Case No. D2011-0484 (<energicwebsystems.com>).
The Complainant states that it has filed trademark opposition actions and rectification petitions for cancellation of the Respondent’s trademark registration numbers 3191718 and 3191719 and has obtained favorable orders. The Complainant further submits that the Respondent’s website has used identical webpages from the Complainant’s website for identical goods. The Complainant highlights the Respondent has falsely claimed history from 1974 and its origins in Japan, when in fact, the Respondent was established in 2016 in India. The Complainant adds the Respondent has removed the copied contents from the website after it was brought to the attention of the Indian Intellectual Property Appellate Board (IPAB) during the rectification proceedings on January 23, 2021 and has redirected the disputed domain name to another website.
The Complainant requests for transfer of the disputed domain name on the grounds that the disputed domain name is identical or confusingly similar to its trademark, and the Respondent lacks rights or legitimate interest to use its mark in the disputed domain name. The Complainant asserts that the disputed domain name has been registered and is being used in bad faith with an intent to deceive the public and to gain from the reputation and goodwill associated with its trademark.
The Respondent denies that it adopted a mark similar to the Complainant’s trademark and argues that its device mark “Enagic with device of human body” has a different look and feel. The Respondent states that it was formed on August 4, 2016 but commenced using its mark from 2015. The Respondent argues that its products and its trade channels are different from the Complainants’ and that it serves the Indian market, therefore the disputed domain name is not likely to mislead Internet users or the public.
The Respondent alleges that the Complainant has not revealed details about previous legal actions between the parties in India. The Respondent further states that the IPAB has not been operational since March 2021 and alleges that the legitimacy of the IPAB order is “severely in doubt”. The Respondent adds that the Complainant is attempting forum shopping by requesting similar relief before multiple forums.
The Respondent argues that its rights “over the trademark / trade name “enagic” has been confirmed by the Registrar of Companies and denies bad faith on its part as the disputed domain name accurately describes its legitimate business. The Respondent challenges the Complainant’s trademark rights in India and argues that its use of the mark in India is prior to the Complainant. The Respondent argues that the disputed domain name reflects its business name and serves a valid legitimate commercial purpose.
The Respondent is of the view that the present Complaint is filed to harass the Respondent and prejudice its other cases and alleges that the present Complaint is an abuse of the process. The Respondent states the dispute between the parties has been considered before various judicial forums in India, and has not reached finality, therefore the present Complaint is premature and ought not be entertained.
The Respondent has made several other submissions such as, the Complainant has suppressed the 2019 order given by the Registrar of Companies, that the Respondent is entitled to retain its corporate name. The Respondent alleges that despite several attempts before the IPAB to restrain it from using the disputed domain name, the Complainant did not get the said relief, and therefore this forum should not entertain the present Complaint, which it alleges, involves complicated questions of fact and Indian law.
The Respondent denies knowledge of the Complainant’s global recognition due to lack of documents showing connection between the Complainant and its international group companies. The Respondent doubts the existence of the Complainant’s group entities and refutes the Complainant’s marks are known internationally or even in India. Use of the Complainant’s mark in India prior to 2015 is also refuted, due to lack of documents showing Complainant’s sales in India. As the license agreement between the Complainant and its licensee is from 2017, and is unregistered, the Respondent doubts the Complainant’s use of its mark in India and its domain name <enagic.co.in> prior to 2015. The Respondent highlights that on December 14, 2015 the archives show the message displayed on the landing page of <enagic.co.in> was “Opening Soon Enagic India Office”. The Respondent adds the social media profile filed by the Complainant is of Enagic USA, which does not establish the Complainant’s presence or prior adoption of its mark in India.
The Respondent denies that it has used the Complainant’s mark to induce customers and also denies publishing copied content shown in annexures 23 and 25 of the Complaint, stating that its website was suspended at that time. Finally, the Respondent argues that since there are pending courts cases on overlapping issues, the proceedings should be terminated and requests to retain the disputed domain name.
The Complainant has filed a supplemental submission by an email dated May 20, 2021 to the Center. In the email, the Complainant has addressed the doubts expressed by the Respondent regarding the validity of the IPAB orders. The Complainant has stated that the IPAB was the appellate body for orders of the Intellectual Property Offices in India. As the IPAB was dissolved through an Ordinance2 with effect from April 4, 2021, the transitional provisions under the Ordinance Section 15, stipulates that all pending matters shall be transferred to the respective High Courts at the same stage it was on, at the date of transfer.
The Complainant clarifies, based on the provisions of the Ordinance, that the interim orders of the IPAB staying the effect of the Respondent’s trademark registration are valid. The Complainant further states that the matters are now shifted to the concerned High Court at the stage it was in the IPAB. The Complainant asserts, based on the provisions of the Ordinance, that the submission made by the Respondent, that the IPAB order does not hold good, is not valid.
The Panel has the discretion to allow supplemental submissions made by the parties under paragraphs 10 and 12 of the Rules. The Panel in exercise of its discretion, allows the Complainant’s additional submission on record, for the reason that the submission and the supporting document, namely the Ordinance, is a relevant document for the records.
6. Discussion and Findings
The Respondent has requested for terminating these proceedings on the grounds that there are pending courts cases on overlapping issues. The Panel acknowledges and notes that there are ongoing court proceedings and disputes between the parties. However, other pending disputes between the parties do not necessarily oust the jurisdiction of this forum, as panels generally issue a decision on the merits of the case, even in overlapping court – UDRP proceedings, notwithstanding the fact that a UDRP decision would not be binding on the court. See Section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Pending disputes in courts or in any other forums between the parties, does not preclude an administrative panel from conducting proceedings concerning a domain name dispute under the Policy.
The Panel holds that it has jurisdiction to entertain this dispute, which arises from the contract or agreement between the Respondent and the Registrar. Under the registration agreement for the disputed domain name entered between the Respondent and the Registrar, the Respondent has agreed to be bound by the Policy. If a third party (the Complainant / owner of the trademark) makes a complaint under the Policy, claiming that its rights have been violated due the registration and the use of the disputed domain name, the registrant of the disputed domain name or the Respondent in the present case, becomes a party to the administrative proceeding under the Policy.
Under paragraph 4(a) of the Policy, the Complainant has to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of its registered trademarks, its sales figures in India and internationally, and invoices of its transactions using the mark, based on which the Panel finds the Complainant has established its rights in the mark. The Respondent has not disputed the Complainant’s trademark rights per se but has refuted the extent of the Complainant’s use of its mark India and its global reputation. As the Internet Domain Name System is global in nature, the jurisdiction where the trademark is valid is not considered relevant to a panel’s assessment under the first element (it may however be relevant under the second and third elements). Also, the goods and services for which the mark is registered or used in commerce, the filing date, priority date, date of registration, date of first claimed use, are not considered relevant to the first element test. See section 1.1.2 of WIPO Overview 3.0.
The Respondent has also argued that its device mark is different from the Complainant’s mark and is therefore not likely to be confusingly similar. Design or figurative elements of a mark are not taken into consideration when assessing confusing similarity under the first element. See section 1.10 WIPO Overview 3.0. The comparison is generally between the textual elements of a complainant’s trademark and a disputed domain name. Moreover, in a case such as the present one, where the Respondent has alleged that confusing similarity is not likely to arise due to the figurative elements in its own mark, this is not relevant for the purposes of assessing confusing similarity or the lack of it, but may come into play under the second and/or third elements. In any event, the comparison for confusing similarity is only between the Complainant’s mark and the disputed domain name and not between the trademarks of the parties.
The comparison for confusing similarity is based only on the alpha-numeric component of the disputed domain name and the textual components of the Complainant’s mark. The figurative components of a trademark are therefore not relevant under this test, for the reasons discussed. In the present case, it is found that the disputed domain name contains the Complainant’s mark in its entirety and is found to be identical or confusingly similar to the Complainant’s mark.
The Complainant has established the first element under paragraph 4(a) of the Policy. The disputed domain name is found to be confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, the Complainant is required to show the Respondent lacks rights or legitimate interests in the disputed domain name. It is sufficient for the Complainant to first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and if the Complainant has done so, the burden of production then shifts to the Respondent to provide material to establish rights or legitimate interests to rebut the Complainant’s case. In the event that the Respondent fails to provide rebuttal evidence of any rights or legitimate interests, the Complainant may be deemed to have satisfied the second element under the Policy. See section 2.1 WIPO Overview 3.0.
The Complainant has submitted that the Respondent is not authorized or permitted to use its mark, and the Respondent is providing unauthorized products and services using its mark. The Complainant states that in the two rectification actions against the Respondent’s trademark registrations, it has obtained favorable orders against the Respondent. The Complainant has also clarified through its supplemental submissions, that the doubts expressed by the Respondent, concerning the validity of the IPAB orders, is ruled out.
The Respondent on its part, has argued that it has rights and that it has adopted the mark legitimately in 2015 and has used it in connection with different goods and services from those of the Complainant. The evidence filed by the Respondent however shows that the Respondent has primarily used its mark in connection with products related to water ionization and water alkalization. It is therefore evident that the Respondent’s business is in the same field or area of business as the Complainant, namely water ionization machines and parts for water filtration machines. Under these circumstances, it seems very unlikely that the Respondent was not aware of the reputation and the pre-existing rights of the Complainant’s mark. It is more likely that the Respondent has adopted the Complainant’s mark, due to the reputation associated with the mark which the Complainant has used for several decades in this area of business.
It is well-established that the provisions under the second element of the Policy are to be interpreted for clear cases of non-infringing use of a domain name by the Respondent. The Panel is mindful that the question concerning the Respondent’s adoption of the trademark and business name in good faith as an honest adopter may involve complex issues of law and fact and the Policy may not in all such cases be the most appropriate forum for evaluating such issues. In the present case, while the issues of the trademark rights can be determined in a defended hearing in court or before any appropriate authority, the Panel in the present dispute has the jurisdiction to determine whether there was honest adoption of the mark in connection with the disputed domain name, based on the evidence filed by the parties.
Given the inherent strength of the Complainant’s mark, which is a coined word, and the Complainant having established its prior and extensive use in commerce, the Respondent claims of legitimate or bona fide honest adoption of an inherently strong mark and furthermore using it in the same area of business, lacks conviction. The record does not permit an inference of bona fide or legitimate commercial use of the disputed domain name for these reasons. On the contrary, it suggests that the Respondent has intentionally tried to exploit the Complainant’s mark by using it in the disputed domain name, which does not support the finding that the Respondent has rights or legitimate interests in using the mark in the disputed domain name.
The Panel accordingly finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which has not been successfully rebutted. The second requirement under paragraph 4(a) of the Policy, has been fulfilled by the Complainant.
C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Panel finds that the Complainant has submitted a well-founded case to establish that the Respondent was or ought to have been aware of its rights in the mark when the disputed domain name was registered. First, the Complainant is clearly a prior adopter and user of the mark. Second, the Complainant has established its continuous and extensive use of the mark with credible evidence. Third, the nature of the mark, which is an inherently strong mark being a unique coined term. Fourth, the Complainant’s mark has been recognized by different forums to be a mark of repute. Fifth, online searches clearly show the Complainant’s association with the mark and its rights in its mark. Sixth, the Respondent is found to be active in the same area of commerce as the Complainant.
The Respondent’s claims that it has adopted the mark and registered the disputed domain name with no knowledge of the Complainant’s mark, is therefore unfounded for the reasons discussed. The Respondent’s claims of using its mark in connection with its business of manufacturing and distribution of spare parts for various machines, which it has argued is a different area of business than the Complainant’s business, has also been negated by the evidence submitted by the Respondent, which shows that its sales invoices are for water treatment equipment, particularly for alkaline ionization of water, which is the same business area as the Complainant. The Respondent’s argument that its registration of the disputed domain name under the gTLD “.global”, for marketing its products that is restricted only for the India market, in the Panel’s view, appears to be untenable and somewhat contradictory.
It is therefore apparent, from the circumstances discussed, that the Respondent, knew or ought to have known of the Complainant’s mark and has used it in the disputed domain name with an intent to create confusion in the minds of Internet users. Such use of the disputed domain name amounts to misleading people who are interested in the Complainant’s, products, service and business, which is recognized as bad faith registration and use under the Policy.
The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <enagic.global> be transferred to the Complainant.
Date: June 17, 2021
1 Dictionary.com confirms that the word “enagic” has no dictionary meaning.
2 Government of India Ministry of Law and Justice, The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021 published in the Gazette of India dated April 4, 2021.