The Complainant is Enagic USA, Inc. of California, United States of America, represented by Hahn & Bolson LLP, United States of America.
The Respondent is Mr. Matt Canham of Australia. 2. The Domain Name and Registrar
The disputed domain name (the “disputed domain name”) is registered with SamoaNIC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2011, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2011. The Respondent sent several email communications but did not submit a formal Response.
The Center appointed Isabel Davies as the sole panelist in this matter on March 17, 2011. 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
KANGEN WATER is registered as a trade mark for electrolytic water with the United States Patent and Trade Mark Office as Registration No. 2990706. It was registered as of August 30, 2005, alleging a first use date of June 23, 2005. It was registered and is currently owned by Enagic Co. Ltd (“Enagic Japan”), a Japanese corporation. Enagic Japan has licensed the use of the trade mark to the Complainant. The Complainant imports, markets and sells water ionisers in the United States of America (the “U.S.”) under this trade mark.
The Complainant states that Enagic Japan has used the registered trade mark all over the world in the general promotion of water ionisers which control the pH level of water. Evidence was submitted demonstrating the history of the Complainant’s business. No evidence has been submitted of the level of sales of this product. However, products bearing the KANGEN WATER trade mark are available via the Complainant’s website, “”. The Complainant has offices throughout the U.S. and in the rest of the world via other companies in the Enagic group.
The Respondent registered the domain name on July 18, 2006.
The Complainant sent an email on December 17, 2010 advising the Respondent that the unauthorised use of the KANGEN WATER trade mark within the disputed domain name violated the Complainant’s rights in the trade mark. The Complainant requested that the Respondent change the domain name to some other domain name which did not violate any of the Complainant’s rights. The Respondent replied back on December 28, 2010 stating that the Respondent was open to an offer from the Complainant for the domain name or to find a current distributor of the Complainant’s products and set up a monthly arrangement with them, whereby the Respondent redirects traffic for a fee. The Complainant replied granting the Respondent an extension of a week for a response, while the Respondent sought legal advice. The Respondent further emailed on January 7, 2011 stating his refusal to transfer or change the domain name.
The Panel finds no reason to doubt the contentions in the Complaint. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name Is Confusingly Similar to the Complainant’s Mark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trade mark KANGEN WATER.
The Complainant contends that the addition of a hyphen to the mark does not negate the confusing similarity between the mark and the disputed domain name.
The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, nor is the Respondent connected with the Complainant in any way. The Complainant has not licensed nor has it given permission to the Respondent to use the trade mark in its domain name.
The Complainant contends that the Respondent has not used the disputed domain name for a bona fide offering of goods or services, but has rather intentionally chosen a domain name based on the Complainant’s registered trade mark in order to (i) redirect Internet users to a website selling goods produced by Ion Ways, a direct competitor of the Complainant; and (ii) generate traffic to a website and through this procedure generate income through sponsored links advertising the products of the Complainant’s direct competitors. By doing this, the Complainant asserts that the Respondent is using the Complainant’s trade mark for its own commercial purposes. Registered and Used in Bad Faith
The Complainant contends that bad faith may be found where a respondent knew or should have known of the registration and use of the trade mark prior to registering the domain name. The Complainant contends that it is the biggest player in the industry of water ionisers in the world and the Respondent sells water ionisers produced by Ion Ways, the Complainant’s direct competitor. Anyone working in the industry would have been well aware of the Complainant and its products. The Respondent is unlikely to have been unaware of the existence of the KANGEN WATER trade mark.
The Complainant contends that bad faith may be inferred when a respondent registers and uses the entire trade mark in a domain name. In this instance, the Complainant contends that the Respondent is using the entire KANGEN WATER trade mark with prior knowledge of the Complainant’s trade mark.
Furthermore, the Complainant contends that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion between the Complainant and the Respondent.
The disputed domain name is currently connected to a website containing sponsored links which direct Internet users to competitors of the Complainant without authorisation or legitimate rights to use the domain name in such a manner. As such, the Complainant contends that the Respondent is using the disputed domain in bad faith.
The Complainant further contends that the Respondent’s refusal voluntarily to transfer or cancel the disputed domain name constitutes bad faith on the basis that such a refusal has been given with knowledge that the disputed domain name infringes the Complainant’s trade mark right in KANGEN WATER. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the required time period. The only communications submitted by the Respondent are the email of February 3, 2011 and the email of February 9, 2011. Neither of those communications specifically address the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are that:
i. The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the domain name; and
iii. The Respondent’s domain name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the Respondents’ failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is a civil one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar
The Complainant is the owner of the U.S. Trade Mark for KANGEN WATER, which was registered before the disputed domain name was registered. Compared to the Complainant’s trade mark, the disputed domain name completely reproduces the trade mark. The inclusion of a hyphen between the words KANGEN and WATER does not eliminate the similarity. (Société Nationale de Chemins de Fer Francais v yves Mw Invest,WIPO Case No. D2009-0358, and Fort Knox National Company v Ekaterina Phillipova,WIPO Case No. D2004-0281).
For the reasons stated above, the Panel holds that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i) – (iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of proof passes to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Bleep d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Based on exhibits accompanying the Complaint, the Respondent's website presently includes sponsored link advertising. The Panel has viewed Respondent's website and this confirms that Respondent is using sponsored advertising links on the website. The Respondent's website also listed links to websites promoting the Complainant's competitors. By diverting traffic to third parties using paid link advertisements, the Panel finds that the Respondent is using the Complainant's mark for its own commercial purposes.
In the absence of a Response, the Panel accepts the Complainant’s contention that the Respondent is not licensed or authorised to use the KANGEN WATER trade mark in its domain name.
The Respondent has not responded to the Complainant’s claims.
As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel is satisfied that the Complainant is deemed to have met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that, by using the disputed domain name for a set of links to other providers of water ioniser products, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s KANGEN WATER trade mark as to the source, sponsorship, affiliation or endorsement of the website for the following reasons. The disputed domain name reproduces the Complainant’s trade mark in its entirety in the absence of any plausible use of the disputed domain name that would constitute good faith. In addition to that, the Respondent’s website provides links to the Complainant’s competitors, selling competitive products and other water ioniser products to Internet users. Therefore, Internet users are likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would in all probability attract more customers to the site of the disputed domain name resulting in commercial gain as the Respondent’s site provides links to several commercial websites.
Furthermore, the Panel finds that the Respondent acted intentionally. The Panel finds it inconceivable that the Respondent could have registered the disputed domain name without having the Complainant’s KANGEN WATER trade mark in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trade mark is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant had been selling products using the name KANGEN WATER for some time before the domain name in dispute was registered.
Finally, the Respondent has chosen to refrain from responding to the Complaint. Such circumstances taken together support an inference of bad faith registration and use.
The Panel finds the disputed domain name was registered and is being used in bad faith and the Complainant has therefore met the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Isabel Davies
Sole Panelist
Dated: March 25, 2011
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