CoryxKenshin LLC v hasnain ashraf

WIPO Case No. D2024-1596

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CoryxKenshin LLC v. hasnain ashraf

Case No. D2024-1596

1. The Parties

The Complainant is CoryxKenshin LLC, United States of America (“United States”), represented by Carlson,

Gaskey & Olds, P.C., United States.

The Respondent is hasnain ashraf, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <coryxkenshinmerchus.store> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2024. On April 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 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 20, 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 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2024.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 17, 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 in this administrative proceeding is CoryxKenshin, LLC. The Complainant registered its CORYXKENSHIN trademark with the United States Patent and Trademark Office for use with the goods including cell phone cases, silicon wristbands in the nature of a bracelet, printed posters, stickers, and apparel including shirts, hoodies, t-shirts, sweatshirts, pants, “baseball caps and hats”, and “providing on-line videos featuring video game reviews, video game play with commentary and narration, animated parodies and content, lifestyle, news, and other entertainment in the field of video games, not downloadable”.

The Complainant is, inter alia, the owner of:

- United States Trademark CORYXKENSHIN, registration number 6,977,752, registered on

February 14, 2023; and

- United States Trademark CORYXKENSHIN, registration number 6,482,025, registered on

September 14, 2021.

The Complainant is also the owner of the domain name, <coryxkenshin.com>, registered on February 29,

2016.

The disputed domain name was registered on February 22, 2024.

The disputed domain name resolves to an unauthorized website offering purported CORYXKENSHIN - branded products for discounted prices and presenting the Complainant’s trademark and copyrighted images of the Complainant’s products. In addition, on the top left of the Respondent’s home page the message “Coryxkenshin Merch | Coryxkenshin Official Store || Coryxkenshin” is displayed.

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 that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and in particular that the Respondent registered and used the disputed domain name in bad faith to sell non-licensed products.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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(i)        the disputed domain name is identical or confusingly similar to a trademark 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 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “merch” and “us”, may bear on 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 mark 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.

Panels have held that the use of a domain name for illegal activity here, claimed as impersonation/passing
off, 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.

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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 intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark.

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.

Owing to the use of the disputed domain name to direct to a website mimicking the Complainant’s website by
displaying the Complainant’s trademark and copyrighted images, and presenting itself as Coryxkenshin
Official Store, it is at the least very unlikely that the Respondent was not aware of the existence of the
Complainant’s trademarks and domain name when registering the disputed domain name.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the CORYXKENSHIN trademark.

Panels have held that the use of a domain name for illegal activity here, claimed as impersonation/passing off, 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.

The Panel finds that the Complainant has established the third element of the Policy.

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 <coryxkenshinmerchus.store> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: May 31, 2024