CoryxKenshin LLC v All in One, juicewrldmerchshop

WIPO Case No. D2024-1038

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CoryxKenshin LLC v. All in One, juicewrldmerchshop

Case No. D2024-1038

1. The Parties

The Complainant is CoryxKenshin LLC, United States of America, represented by Carlson, Gaskey & Olds,

P.C., United States of America.

The Respondent is All in One, juicewrldmerchshop, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <coryxkenshinmerchandise.store> is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2024. On March 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 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 (Withheld For Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 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 March 12, 2024, which was updated to comply with the Center’s mutual jurisdiction policy on March 15, 2024.

The Center verified that the Complaint together with the amendment to 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 March 18, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 7, 2024. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 8, 2024.

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The Center appointed Andrea Mondini as the sole panelist in this matter on April 12, 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 was founded in 2009 and is based in the United States of America and provides videos on its YouTube channel.

The Complainant holds the domain name <coryxkenshin.com> which resolves to its official website which offers merchandising products.

The Complainant owns several trademark registrations, including:

TRADEMARK	JURISDICTION	REGISTRATION	REGISTRATION	INTERNATIONAL
NUMBER	DATE	CLASS
CORYXKENSHIN	United States of America	6977752	February 14, 2023	9, 14, 16, 25

CoryxKenshin United States of America 6482025 September 14, 2021 25, 41

Because the Respondent did not file a Response, not much is known about the Respondent.

The disputed domain name <coryxkenshinmerchandise.store> was registered on December 23, 2023.

According to the evidence submitted with the Complaint, the disputed domain name resolves to an online store purportedly offering merchandising articles featuring the “CORYXKENSHIN” trademark.

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.

Notably, the Complainant contends as follows:

The trademark CORYXKENSHIN has been extensively used on the Complainant’s YouTube channel to identify the Complainant and its products / services. Today, the Complainant’s YouTube channel has 18 million subscribers.

The disputed domain name is confusingly similar to the CORYXKENSHIN trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the descriptive term “merchandise” is not sufficient to avoid confusing similarity. Internet users searching and wishing to obtain the Complainant’s products offered on the Complainant’s website are likely to be mistakenly directed to the Respondent’s website.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name. The by the disputed domain name.

The disputed domain name was registered and used in bad faith because the Respondent has taken steps to conceal its identity to obtain the disputed domain in bad faith to operate an imitation website offering non- licensed merchandising articles using the CORYXKENSHIN trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the

complainant has rights;

(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 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 trademark 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 Panel finds the entirety of the mark is reproduced within the disputed domain name.

Although the addition of other terms such as here “merchandise” may bear on assessment of the second and third elements, the Panel finds the addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The addition of the generic Top-Level Domain (“gTLD”) “.store” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1.

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.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that 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 Complainant has shown that the Respondent posted a website under the disputed domain name
offering products featuring the Complainant’s trademark. The Complainant contends that these products are
unlicensed. The Respondent has not denied this allegation. In any event, even if the products offered by the
Respondent were genuine/licensed, the Respondent’s use of the disputed domain name does not meet the
“Oki Data Test”, because this site does not disclose the lack of relationship - with an accurate and prominent
disclaimer - between the Respondent and the Complainant. WIPO Overview 3.0, section 2.8.

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.

Based on the available record, 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.

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.

In the view of the Panel, noting that the Complainant’s trademark predates the registration of the disputed domain name and considering that the Complainant’s trademark is well known and that the disputed domain name resolves to a website featuring the Complainant’s trademark and offering products featuring its trademark CORYXKENSHIN, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name resolves to an imitation website impersonating the Complainant and selling merchandising goods under the trademark CORYXKENSHIN and thereby using the Complainant’s trademarks and without disclosing the Respondent’s lack of a relationship with the Complainant. The impression given by this website would cause consumers to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not. The Panel holds that by using the disputed domain name, 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 mark as to the source, sponsorship, affiliation, or endorsement of its web site in the sense of Policy, paragraph 4(b)(iv).

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Moreover, panels have held that the use of a domain name for illegal activity such as in the present case impersonating the Complainant constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy with regard to the disputed domain name.

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 <coryxkenshinmerchandise.store> be transferred to the Complainant.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: April 24, 2024