The Complainant is Koi CBD, LLC, United States of America (“United States”), represented by The Myers Law Group, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Stanley lai, Hong Kong, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar of the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that the language of the registration agreement is English.
The Center sent an email communication to the Complainant on October 8, 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 October 8, 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 December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 21, 2022. 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 BackgroundThe Complainant is a limited liability corporation based in California. According to the Complainant, it has been manufacturing and distributing Cannabidiol (i.e. CBD) products since 2015 from a website at “www.koicbd.com”. Some of its CBD products include pet food. See e.g. “www.koicbd.com/cbd-products/cbd-for-pets”.
Also according to the Complainant, its customers are located all around the world and the Complainant claims to be internationally known.
The Complaint includes evidence of two trademarks registered in the United States. United States Registered Trademark No. 6,279,794, KOI, in respect of a range of products for so-called electronic cigarettes. The application was filed on December 20, 2018, and registered on March 2, 2021. The application claims first use in 2017 and first use in commerce on December 20, 2018.
The second trademark, United States Registered Trademark No. 6,279,795, is for a stylized version of the word “Koi” with a device element of a fish. It was filed and registered on the same dates as the abovementioned word mark.
So far as the record in this case shows, the Respondent registered the disputed domain name on November 3, 2020.
The disputed domain name resolves to a website apparently of a pet supplies retail shop, “Koi CBD”. The physical location of the shop does not appear to be specified. The website is in English.
5. Discussion and FindingsNo response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or her case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 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.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for KOI identified in Section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the Top Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.online” TLD, the disputed domain name consists of the Complainant’s registered trademark and the term “CBD”. The term “CBD” can be an acronym for a number of different things or entities including (as noted above) Cannabidiol, the distinctive ingredient of the Complainant’s products. As this requirement under the Policy is essentially a standing requirement, however, the addition of such a term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
This analysis also applies in respect of the Complainant’s Trademark No. 6,279,795 as it is usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. See for example, WIPO Overview 3.0, section 1.10.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name after the Complainant had filed its trademark applications and also after the Complainant began using the trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name.
The pet shop which the Respondent appears to be operating does appear to be named “Koi CBD”. There is no information about when the purported pet shop opened or when it adopted this name. The earliest posts on its website are dated from September 2020 although according to the WhoIs the disputed domain name was not registered until November 3, 2020. In these circumstances, the name of the pet shop cannot be invoked for the purposes of paragraph 4(c)(ii) as the only information suggests it was adopted several years after the Complainant adopted and began using its name “Koi CBD” and its trademark.
The fact that the Complainant and the Respondent are located in different countries does not necessarily provide the Respondent with rights or legitimate interests under the Policy. Both parties are operating on the Internet and have websites accessible from all around the world. Both parties are also using the name “Koi” and “Koi CBD” in overlapping fields – pet supplies.
Further, while “Koi” is a type of Japanese carp, the images on the Respondent’s website do not suggest a focus or emphasis on fish or aquariums as pets or related products. On the contrary, most products seem directed to dogs and cats although the Panel notes that 2 of the 16 products in the online shop are fish food products.
In addition, the Respondent’s name is neither “Koi” nor “Koi CBD”. There does not appear to be any obvious or natural explanation for the adoption of those two terms in the disputed domain name. How the Respondent arrived at precisely the same combination as the Complainant, several years after the Complainant’s adoption of that name for its website, therefore, calls for explanation. The Respondent, for whatever reason, has chosen not to provide that explanation.
In these circumstances, the Panel considers that the Complainant has established a prima facie case that the Respondent is not using the disputed domain name in good faith in connection with a bona fide offering of goods or services under the Policy. As the Respondent has not attempted to rebut that prima facie case or otherwise advance any claimed entitlement, therefore, the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As noted above, the Complainant claims it and its trademark are internationally known. The Complainant has not provided evidence, however, to support that bald assertion. The Panel therefore is not prepared to act on that claim. See e.g. WIPO Overview 3.0, section 1.3 (in the context of a claim to rights in an unregistered trademark).
As discussed in section 5B above, however, there does not appear to be any natural or obvious explanation for the Respondent’s adoption of the name “Koi CBD” for the name of its pet shop and the associated disputed domain name. In these circumstances, it appears likely that the Respondent has adopted the disputed domain name with knowledge of the Complainant and its trademark. That is, the Respondent appears to have adopted the disputed domain name to take advantage of the significance of the terms “Koi” and “Koi CBD” as the Complainant’s trademark and is doing so in a field in which the Complainant operates – pet supplies. Noting the circumstances of this case, and that the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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
Warwick A. Rothnie
Sole Panelist
Date: February 4, 2022