WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CoryxKenshin LLC v. minh pham Cardinal
Case No. D2021-3789
1. The Parties
The Complainant is CoryxKenshin LLC, United States of America (“United States” or “U.S.”), represented by Carlson, Gaskey & Olds, P.C., United States.
The Respondent is minh pham Cardinal, Canada.
2. The Domain Name and Registrar
The disputed domain name <cory-kenshin.com> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 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 amendment to the Complaint on November 27, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 30, 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 U.S. company which currently owns and operates a website (the Complainant’s Website) which is linked to the domain name <coryxkenshin.com> through which the Complainant sells a range of clothing and other products. It also provides on-line videos featuring video game reviews, video game play with commentary and narration, animated parodies and content, lifestyle, news, and other entertainment in the field of video games. The Complainant has conducted this business since 2009. It also promotes its business via YouTube and other forms of social media. The Complainant is the owner of a U.S. Trademark Registration No. 6,482,025 which was registered with the United States Patent and Trademark Office on September 14, 2021 claiming a first use in commerce date of April 6, 2009. This trademark is referred to in this decision as the “CORYXKENSHIN registered trademark”.
The Disputed Domain Name was registered on August 18, 2021. It is linked to a website (the “Respondent’s Website”) which is substantially the same in terms of layout and design as the Complainant’s Website and which offers for sale a range of products which appear very similar to those offered by the Complainant.
5. Parties’ Contentions
The Complainant’s case is set out in some detail but it can be summarized as follows.
a) The Disputed Domain Name is identical or confusingly similar to the CORYXKENSHIN registered trademark. The Complainant also asserts common law trademark rights in the term CORYXKENSHIN – see discussion below.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent has registered and used the Disputed Domain Name in bad faith. The Complainant says the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by use of a domain name confusingly similar to the Complainant’s CORYXKENSHIN registered trademark. It says the Respondent has unfairly tried to take advantage of the term CORYXKENSHIN.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in respect of the Disputed Domain Name:
(i) the Disputed Domain Name is identical to 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 the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the CORYXKENSHIN registered trademark.
The Panel finds the Disputed Domain Name is confusingly similar to the CORYXKENSHIN registered trademark. It is well established that the generic Top-Level Domain (“gTLD”) (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar (see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). The only differences between the Disputed Domain Name and the CORYXKENSHIN registered trademark are the alteration of the letter “x” to a “-”. The Panel considers this to be trivial and clearly does not serve to remove the confusing similarity. It is noted that the CORYXKENSHIN registered trademark was registered after the date the Disputed Domain Name was registered (see above) but (also noting the clear targeting of the same) the Panel however finds that the Complainant has rights in the unregistered trademark CORYXKENSHIN for the purpose of this proceeding. It is clear that “CORYXKENSHIN” was adopted as the substantive part of the Complainant’s name with effect from 2009 (see above) and has been used on that basis ever since by the Complainant. The evidence establishes the Complainant trades under that name and has developed a substantial reputation for its products and services. By way of example the evidence establishes that the YouTube Channel for CoryxKenshin had 7.27 million subscribers on September 19, 2020, 9.14 million subscribers on March 12, 2021, and 11.5 million subscribers on November 8, 2021.
The Panel agrees with the approach in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) concerning this issue at section 1.3:
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning”.
The Panel is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term.
The Panel finds Disputed Domain Name is confusingly similar to the unregistered CORYXKENSHIN trademark for the same reasons as discussed above in relation to the CORYXKENSIN registered trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly to the Complainant’s trademark, and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
“(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 organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the term CORYXKENSHIN. The Complainant has prior rights in the unregistered CORYXKENSHIN trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce relevant evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent – using the disputed domain name to sell goods effectively passed off as those of the Complainant – has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the Panel concludes that the Respondent chose to register a name confusingly similar to the Complainant’s trademark in order to facilitate a business where the Respondent’s Website could in effect impersonate the Complainant and offer for sale goods directly competing with those offered by the Complainant. Manifestly the choice of name was not coincidental given that the combination of the words “cory” and “kenshin” is, in the Panel’s view, unusual and distinctive.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers by creating a likelihood of confusion with the Complainant's CORYXKENSHIN trademark. The Panel also notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <cory-kenshin.com>, be transferred to the Complainant.
Nick J. Gardner
Date: January 11, 2022