ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION CoryxKenshin LLC v. Rana Atif, fashion Case No. D2024-1585 1. The Parties The Complainant is CoryxKenshin LLC, United States of America (“United States or US”), represented by Carlson, Gaskey & Olds, P.C., United States. The Respondent is Rana Atif, fashion, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2024. On April 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2024, 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 (Privacy service provided by Withheld For Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2024, 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 17, 2024. 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 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2024.
page 2 The Center appointed David Stone as the sole panelist in this matter on May 21, 2024. 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 operates a YouTube channel established in 2009, which now has over 18 million subscribers. The Complainant owns the following registered trademarks (the Marks): - CORYXKENSHIN: US Trademark registration No. 6,977,752 registered on February 14, 2023, in international classes 9, 14, 16 and 25; and - CORYXKENSHIN: US Trademark registration No. 6,482,025 registered on September 14, 2021, in international classes 25 and 41. The Complainant is the owner of the domain name which, at the date of this decision, redirects to the Complainant’s YouTube channel. The Complainant provided evidence that this domain name had been used previously to host a website selling t-shirts, sweatshirts, and other clothing items. Further, the Complainant uses @CoryxKenshin as a social media handle on several platforms, including on YouTube and Instagram. The disputed domain name was created on December 9, 2024. At the date of this decision, the Respondent is maintaining a website at the disputed domain name which (i) displays the Marks prominently and numerously; (ii) claims to be a “CoryxKenshin Merch Official Merchandise Store” (and describes itself as “the official online store… [with] real merchandise that features the famous American actor and YouTuber coryxkenshin… Check out this official and real coryxkenshin merch to shop high quality and genuine merch items online at discounted prices”); and (iii) uses prominently at least one of the key images used on the Complainant’s YouTube channel. The Respondent is purportedly offering for sale shirts, sweatshirts, hats, and other clothing items (some of which bear signs identical or similar to Marks) via the website at discounted prices without any disclaimer of lack of association with the Complainant at the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant contends that, under the first element, the Marks and the disputed domain name are confusingly similar and almost identical with the Respondent only having “merch” added to the end of the Marks. Internet users searching and wishing to obtain the Complainant’s goods offered on the Complainant’s website are likely to be mistakenly directed to the Respondent's website. The disputed domain name causes at least “initial interest confusion” among Internet users who seek the Complainant's website. Under the second element, the Complainant contends that the Respondent is using the Complainant’s Marks without permission and is using the identical or confusingly similar disputed domain name. The Respondent is not commonly known by the disputed domain name.
page 3 Under the third element, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Respondent has taken efforts to conceal its identity by not providing its name when registering the disputed domain name. The only plausible reason for the Respondent’s registration of the disputed domain name was to obtain the disputed domain name in bad faith to sell unlicensed products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Marks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the Marks is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds that the addition of “merch” is not sufficient to alleviate the finding of confusing similarity. Although the addition of other terms here, “merch” and the generic top-level domain (“gTLD”) “.store”, may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Further, the website to which the disputed domain name resolves does not fall under the safeguards of fair use envisioned under section 2.8 of the WIPO Overview 3.0, considering the lack of disclaimer on the website as to its lack of association with the Complainant.
page 4 Further, panels have held that the use of a domain name for illegal activity, here, claimed sale of counterfeit goods and impersonation/passing off (albeit not claimed in those terms), or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent created a website at the disputed domain name which (i) displays the Marks prominently and numerously; (ii) claims to be the official merchandise website of the Complainant; (iii) uses prominently at least one of the key images used on the Complainant’s YouTube channel; and (iv) purportedly offers for sale unlicensed items of clothing bearing signs identical or similar to the Marks at discounted prices without any disclaimer of lack of association with the Complainant. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that evidence of a respondent seeking to cause confusion supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4. The Panel finds that the content of the website at the disputed domain name is suggestive of bad faith because it is evidence of the Respondent seeking to cause confusion. The statement on the Respondent’s website that it is the official merchandise website of the Complainant is false. The prominent use of at least one image from the Complainant’s YouTube channel in addition to the sale of unlicensed goods identical and/or similar to those that were offered for sale by the Complainant in the past on the Complainant’s own website shows an intention of the Respondent to confuse and thereby attract Internet users to its website for commercial gain. Further, Panels have held that the use of a domain name for illegal activity, here, claimed sale of counterfeit goods and impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Furthermore, the Respondent has not attempted to refute any of the Complainant’s contentions, which casts additional doubt on the nature of its conduct. WIPO Overview 3.0, section 3.2.1. Having reviewed the record, the Panel concludes that the actions of the Respondent in choosing the disputed domain name were aimed at attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Marks. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith. The Panel finds that the Complainant has established the third element of the Policy.
page 5 7. Decision 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 be transferred to the Complainant. /David Stone/ David Stone Sole Panelist Date: June 4, 2024
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