The Complainant is Moon Juice Ventures, LLC of Los Angeles, California, United States of America, represented by Nada Alnajafi, United States of America.
The Respondent is Satoshi Shimoshita of Tokyo, Japan, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2016. On May 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. The Response was filed with the Center on June 18, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on June 29, 2016. 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 owns a United States federal trade mark registration for MOON JUICE under registration number 4,337,381 filed on January 23, 2012 and registered on May 21, 2013 and owns 12 domain names containing the MOON JUICE mark.
The disputed domain name was registered on July 23, 1998. 5. Parties’ Contentions A. Complainant
The Complainant owns a trade mark registration as set out above which it submits that it has used in connection with “fruit juices, vegetable juices, juice bar services, and takeout restaurant services” since at least January 23, 2012. The Complainant also submits that it has used the MOON JUICE mark in connection with the following goods and services: “cosmetics, perfumery, soaps, non-medicated bath preparations, non-medicated skin care preparations; nutritional supplements; fruit and nut-based food bars; cereal-based food bars; and bakery goods” since at least May 1, 2013 and notes that it has filed a further trade mark application for these goods. As noted above the Complainant says that it owns 12 domain names containing the MOON JUICE mark and as such that it is crucial to its business that the disputed domain name should also be transferred to it.
In March 2015 the Complainant submits that it enquired as to the Respondent’s use of the disputed domain name and that the Respondent attempted to sell the disputed domain name to it for USD 35,000. The Complainant says that although the Respondent also claimed he “acquired M with the aim of long-term development”, after 18 years of owning the disputed domain name and a year after this email correspondence, the Respondent still has not made any legitimate use of the disputed domain name. Instead, says the Complainant, the Respondent has set up the disputed domain name with known malware in order to purposefully confuse consumers into thinking that the disputed domain name is owned by the Complainant by drawing them in with advertising links related to the Complainant’s business. It says that the disputed domain name continues to be used to divert consumers away from the Complainant’s business and to tarnish the Complainant’s business. Over the past two years, the disputed domain name has added sub-links to direct competitors of the Complainant which the Complainant believes contains malware that further tarnishes the Complainant’s mark.
In short the Complainant submits that the Respondent is not using the disputed domain name in relation to a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making a non-commercial or legitimate fair use of the disputed domain name and accordingly that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that the Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring it to the owner of the MOON JUICE mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. In this regard the Complainant notes that asking for a transfer price of USD 35,000 is far in excess of the disputed domain name’s acquisition costs and that this is indicative of bad faith. In addition the Complainant says that more than 18 years after purchasing the disputed domain name and over one year after the email correspondence, the disputed domain name just resolves to a holding page which, says the Complainant, is indicative that it is not being used for a legitimate business activity. The Complainant also notes that the Respondent did not respond to its cease and desist letter of April 2016 and says that this is further evidence of bad faith. B. Respondent
The Respondent submits that he registered the disputed domain name approximately 10 years before the Complainant registered its MOON JUICE mark. He says that he had never heard of the Complainant before he received this Complaint.
The Respondent asserts that although the disputed domain name currently resolves to a parking page he intends to use it for a future business and has not acted in bad faith. He says that he never approached the Complainant to sell the disputed domain name and that he simply responded to an unsolicited approach to acquire it by the Complainant.
On the contrary the Respondent submits that the Complainant is acting in bad faith by filing this Complaint and that it amounts to a case of reverse domain name hijacking. 6. Discussion and Findings
On June 22, 2016, the Complainant submitted an objection to the Respondent’s deficient Response on the basis that it did not meet the requirements set out in paragraph 5 of the Rules because it did not comply with the certification requirement. The Complainant is correct that this is a formal requirement of responses under paragraph 5 of the Rules.
The relevant certification requirement, to be provided by electronic means or otherwise is that the
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
This requirement of the Respondent is to try to assure the accuracy and genuineness of the Response. In circumstances that no formal Response is filed then it is up to the Panel to decide whether informal responses such as the Respondent’s email should be accepted to the record. The Panel notes that under paragraph 10 of the Rules it retains discretion to manage proceedings in the interests of fairness to the parties. Following the Complainant’s objection the Respondent replied immediately that he had submitted his Response in time and wished to proceed. His Response demonstrated that he had some difficulty in understanding English, the language of the Registration Agreement and of the Proceedings. In these circumstances the Panel exercises its discretion in the interests of fairness to accept the Respondent’s informal email to the record. However the Panel notes, as set out below under the third element, that even if it had not admitted the Respondent’s email, this would not have altered its finding in relation to the third element of the Policy. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a United States federal trade mark registration for MOON JUICE under registration number 4,337,381. The disputed domain name wholly incorporates the MOON JUICE mark without any other identifier apart from the “.com” element and therefore the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s mark. As a result the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
For the reasons set out under the third element of the Policy below it is unnecessary for the Panel to consider this element. C. Registered and Used in Bad Faith
The disputed domain name was registered in 1998. There is no evidence precisely as to when the Respondent acquired it except that he noted in his email submission that he registered it approximately 10 years prior to registration of the Complainant’s MOON JUICE mark in the United States. The Complainant’s mark was filed in 2012 with a “first use in commerce” date stated as being in the same year.
There is no evidence before the Panel that the Complainant operated its business or used the MOON JUICE mark in any market prior to 2012. Neither is there anything to suggest that the Respondent, based in Japan, might have been or should have been aware of the Complainant in the United States at the date of registration or acquisition of the disputed domain name. The Panel therefore finds that there is nothing in the record to suggest that either, upon registration in 1998, or upon subsequent acquisition by the Respondent (in which it appears, without dispute, to predate any of the Complainant’s activity under the MOON JUICE mark), the Respondent registered the disputed domain name in bad faith.
Neither is there anything that persuades the Panel that the disputed domain name has been used in bad faith. Although he has owned the disputed domain name for a long time without as yet developing any particular business in relation to it, the disputed domain name appears to resolve to a standard “pay-per-click” parking page with links generally to juices and unrelated topics. The Complainant asserts that the disputed domain name has been set up with a known malware advertiser, but there is no convincing evidence to support that allegation in relation to the page to which the disputed domain name resolves and the Panel notes that this was not mentioned in the Complainant’s cease and desist letter to the Respondent of April 2016. In the particular circumstances of this case the Panel notes that it does not consider that the Respondent’s failure to respond to the Complainant’s cease and desist letter amounts to bad faith.
The Complainant also asserts that the Respondent acquired the disputed domain name for the purpose of re-selling it at a profit to the Complainant or a competitor of the Complainant. However there is nothing to suggest that the Respondent could or should have been aware of the Complainant and its mark at the date of acquisition of the disputed domain name and there is no evidence to support an allegation that the Respondent subsequently sought to approach the Complainant on an unprompted basis to sell the disputed domain name. Although the Respondent acknowledges that when approached by the Complainant to sell the disputed domain name he did make a counter-offer at a much higher price and refused to sell it for less, this does not necessarily amount in the Panel’s view to use in bad faith.
As a result the Complaint fails under the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
The Respondent has sought a finding of reverse domain name hijacking against the Complainant.
For the reasons set out above, it seems to the Panel that this Complaint was brought in order to obtain a domain name that the Respondent had bona fide registered many years prior to the commencement of the Complainant’s business or the registration of its trade mark. Following the Respondent’s refusal of the Complainant’s offer to purchase of the disputed domain name the Complainant still attempted to obtain the disputed domain name by filing this Complaint under the Policy in circumstances that there was clearly no registration in bad faith, or evidence of targeting of the Complainant by the Respondent. As a result there was no reasonable basis on which the Complaint could succeed and the Panel finds that this Complaint amounts to a case of reverse domain name hijacking.
Alistair Payne
Sole Panelist
Date: July 12, 2016
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