K & N Distributors LLC v. enjoymagic
Claim Number: FA1701001712422
Complainant is K & N Distributors LLC (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is enjoymagic (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7daysmagic.com>, registered with Japan Registry Services Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2017; The Complaint was submitted in both Japanese and English. The Forum received payment on January 13, 2017.
On January 17, 2017, Japan Registry Services Co., Ltd. confirmed by e-mail to the Forum that the <7daysmagic.com> domain name is registered with Japan Registry Services Co., Ltd. and that Respondent is the current registrant of the name. Japan Registry Services Co., Ltd. has verified that Respondent is bound by the Japan Registry Services Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2017, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of February 7, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on January 18, 2017, the Japanese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Panel notes that the Registration Agreement is in the Japanese language, thus making the language of the proceedings Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in 7 DAYS MAGIC and alleges that the disputed domain name is either identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a wholesale cosmetics company providing goods by reference to the trademark 7 DAYS MAGIC;
2. the trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 5,062,424, filed November 30, 2015, and registered October 18, 2016;
3. the USPTO registration claims a first use in commerce date of June 1, 2015;
4. the disputed domain name was created on April 23, 2010; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for 7 DAYS MAGIC, the Panel is satisfied that it has trademark rights in that expression.[i]
The Panel is satisfied that the disputed domain name is legally identical to Complainant’s trademark since the domain name takes the trademark and adds the non-distinctive gTLD, “.com” [ii].
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Panel notes that registration of the disputed domain name predates the filing date of Complainant’s trademark by more than five years but the issue of relative timing is addressed under paragraph 4(a)(iii) of the Policy.
Since the Panel finds that Complainant fails to establish registration in bad faith under paragraph 4(a)(iii) of the Policy, no determination of this ground is required.[iii]
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complaint fails on the evidence to show that the disputed domain name was registered in bad faith. Registration of the domain name predates both the filing date and date of first use in commerce of the trademark by many years. The Complaint does not provide any basis for rights that might predate the registration date of the domain name. The Panel finds no evidence that Respondent targeted the trademark at the time of registration of the domain name.[iv] Complainant bears the burden of proof and the Panel finds that the disputed domain name was not registered in bad faith. Accordingly, the Panel finds that Complainant has failed to establish the third element of the Policy.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <7daysmagic.com> domain name be REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: February 25, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
[iii] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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.
[iv] See, for example, Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (FORUM May 16, 2007) determining that respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.
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