national arbitration forum




Tri-Us LLC v. Satoshi Shimoshita

Claim Number: FA0812001239512



Complainant is Tri-Us LLC (“Complainant”), represented by James Lewis, of Patton Boggs LLP, Washington, D.C., USA.  Respondent is Satoshi Shimoshita (“Respondent”), Japan.



The domain name at issue is <>, registered with Enom, Inc.



The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.


Tyrus R. Atkinson, Jr., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.


On December 22, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").


On December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On January 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is identical to Complainant’s MIX 1 mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant is a beverage company producing products that it promotes and sells under the MIX 1 mark, which Complainant registered with the United State Patent and Trademark Office (“USPTO”) on January 8, 2008 (Reg. No. 3,364,533 filed February 8, 2007).  Complainant first launched its brand of beverage products under the MIX 1 mark in October 2006, when it began selling the products in stores in Boulder, Colorado.  It now sells the products in retail stores and online outlets around the country, and has received publicity for the brand in national magazines such as US Weekly, Men’s Fitness, and Style.


Respondent registered the <> domain name on July 29, 2001.  The disputed domain name resolves to a website that features links to third-party websites.



Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."


In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).


Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar


Complainant has received a trademark registration from the USPTO for its MIX 1 mark.  This is sufficient to establish Complainant’s rights in the MIX 1 mark pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”). 


Although Complainant’s application for a trademark registration was filed February 8, 2007, and the disputed domain name was registered in 2001, it is not necessary for Complainant’s mark to predate the registration of the disputed domain name in order to establish enforceable rights pursuant to Policy ¶ 4(a)(i).  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).


Respondent’s <> domain name consists of Complainant’s MIX 1 mark, with the space removed and the generic top-level domain (“gTLD”) “.com” added to the end of the mark.  Typically, UDRP panels find that the removal of a space from a mark does not distinguish a disputed domain name at all, as spaces cannot appear in domain names.  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <> is identical to the complainant's CROATIA AIRLINES trademark). Moreover, the Panel finds that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Consequently, the Panel finds that the deletion of a space and the addition of the gTLD “.com” insufficiently distinguish the disputed domain name from Complainant’s mark, and concludes that the <> domain name is identical to Complainant’s MIX 1 mark pursuant to Policy ¶ 4(a)(i). 


The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).


Rights or Legitimate Interests


Because Complainant has failed to satisfy Policy ¶ 4(a)(iii), the Panel chooses to forego an analysis under Policy ¶ 4(a)(ii).  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).


Registration and Use in Bad Faith


Complainant contends that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  However, Respondent registered the disputed domain name in 2001, and Complainant only started using the MIX 1 mark in commerce in 2006, and even then it was on a small-scale basis in the Boulder, Colorado area.  Because Respondent’s registration predates Complainant’s use of the mark, much less Complainant’s trademark rights in the mark, which began even later, the Panel finds that there is no basis for a finding that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).


The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.



Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.


Accordingly, it is Ordered that the <> domain name remain with Respondent.




Tyrus R. Atkinson, Jr., Panelist

Dated:  February 10, 2009



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