Complainant is Enagic USA, Inc. of Torrance, California, United States of America.
Respondent is Margaret Hwang of Rockville, Maryland, United States of America. 2. The Domain Name and Registrar
The domain name at issue is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On July 2, 2010, Melbourne IT Ltd 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Response was filed with the Center on July 27, 2010.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 30, 2010. 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 is the licensee of the trademark KANGEN WATER. Complainant is the primary distributor of Kangen Water, an ionized water whose formula is the property of Complainant’s licensor, Enagic Co. Ltd., a Japanese corporation, who has been distributing the water product worldwide since 2000. Complainant licenses distributors to sell Kangen Water in the United States.
Complainant’s licensor is the registrant of the trademark KANGEN WATER with the United States Patent & Trademark Office. The mark is registered on the Supplemental Register, and no claim is made to the use of the word “water” as a trademark. The registration shows a first use in commerce in the United States on June 23, 2005. The registration issued on August 30, 2005. Complaint, Annex 3.
The domain name at issue was registered by one Margaret Hwang on September 24, 2006. Complaint, Annex 1. The domain name at issue resolves to a web site on which Continuous Ionized Electrolysis Water Generators, allegingly able to produce Kangen Water, are offered for sale. Complaint, Annex 5. The web site uses the KANGEN WATER trademark, but without any trademark designation.
Margaret Hwang is apparently affiliated with one of Complainant’s United States distributors. All United States distributors are bound by Complainant’s Policies and Procedures. Complaint, Annex 4. The Policies and Procedures provide in pertinent part: “Distributors agree not to advertise Company products or services in any way other than the advertising or promotional materials made available to distributors by the Company.” Complaint, Annex 4, § 11(a). “The Company will not permit the use of its copyrights, designs, logos, trade names, trademarks, etc. without its prior written permission”. Complaint, Annex 4, § 11(c). “Any display ads or institutional or trademark advertising copy, other than covered in the foregoing rules, must be submitted to the Company and approved in writing by the Company prior to publication”. Complaint, Annex 4, § 11(g).
Moreover, Section 12 of the Policies and Procedures expressly prohibits web sites from using Complainant’s name or its trademarks without the prior authorization of Complainant:
No distributor may independently design a website that uses the names, logos, product or service descriptions of the Company, nor may a distributor use “blind” ads on the internet making product, service or income claims which are ultimately associated with Company products or the Company’s compensation plan. All internet websites must be approved by the Company. Any person using Company names, logos, trademarks, etc. on the internet or any other advertising medium, except as permitted by Company Rules and Regulations, shall be subject to immediate discipline, including termination of distributor status. No distributor may offer for sale, or receive payment for Enagic USA merchandise, online.
Complainant attaches a number of demand letters and demand emails to Margaret Hwang, none of which she responded to. Someone who was unidentified who purported to respond on behalf of Ms. Hwang stated that she had moved from the WhoIs address and did not receive the letters and Ms. Hwang did not receive the emails since she does not know how to operate a computer, and, in any event, she was traveling overseas when the mail arrived.
Respondent filed an unsigned, by an unidentified author, uncertified response. Respondent asserted that web sites were permitted by Complainant. Respondent attached as Annex 14 to the Response communications that Respondent was offering the web site for sale to the highest bidder. Respondent asserted that the conduct of a search for Kangen Water on Google ranked Respondent’s web site as the first search result listed. Respondent identified Margaret Hwang as Complainant’s distributor even though Complainant states that she is not listed among the licensed distributors of Kangen Water. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name at issue is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, since Respondent was not authorized to use the trademark in a domain name and expressly prohibited from using the trademark in connection with a web site, and that Respondent had registered and is using the domain name at issue in bad faith since its use was a violation of the distributorship agreement and that Respondent was offering the web site, including the domain name at issue, for sale to the highest bidder. B. Respondent
Respondent contends that it was free to use the copyright “Kangen Water ®” in a domain name and that Complainant was primarily concerned with some of the content on the web site, rather than the use of the copyright as a domain name. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The domain name consists of Complainant’s licensed trademark plus “usa” and the gTLD suffix “.com”. It has long been held that the addition of a geographic indicator to a trademark in a domain name will not preclude a finding of confusing similarity. Wal-Mart Stores, Inc. v. Walmarket Canada,WIPO Case No. D2000-0150 (“Canada” and the gTLD suffix “.com” added to WALMART trademark). Accordingly, the Panel finds that the domain name at issue is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Where Complainant has not only asserted that Respondent has no right to use the licensed trademark in a domain name, but also provided evidence in the form of provisions in the Policies and Procedures that govern the distribution relationship that prohibit such use, the mere assertion by Respondent that it is free to use the “copyright” in a domain name is insufficient.
The consensus view of WIPO panelists concerning the burden of establishing that a respondent has no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
The Policies and Procedures preclude the use of the licensed trademark in conjunction with a web site and prohibit the use of the licensed trademark absent the obtaining of the prior written consent of Complainant. Complainant asserts that Respondent did not seek its prior written consent and that, if Respondent had, Complainant would have denied it. Respondent does not contend that it sought Complainant’s prior written consent, but merely asserts that it was free to use the “copyright” in a domain name that resolved to a web site on which the trademark was used. Moreover, Respondent attaches correspondence in which Respondent professes to offer the web site (including the domain name at issue) for sale to the highest bidder. The Panel finds that such contact constitutes bad faith registration and use. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: August 14, 2010
Full & Egal Universal Law Academy