The Mochi Ice Cream Company v. Domain Admin
Claim Number: FA1904001840241
Complainant is The Mochi Ice Cream Company (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mikawaya.com>, registered with DropCatch.com 463 LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on April 23, 2019.
On April 24, 2019, DropCatch.com 463 LLC confirmed by e-mail to the Forum that the <mikawaya.com> domain name is registered with DropCatch.com 463 LLC and that Respondent is the current registrant of the name. DropCatch.com 463 LLC has verified that Respondent is bound by the DropCatch.com 463 LLC 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 April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 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 postmaster@mikawaya.com. Also on April 25, 2019, the 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.
A timely Response was received and determined to be complete on May 20, 2019.
On May 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On May 28, 2019, Complainant submitted an Additional Submission which was timely.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, The Mochi Ice Cream Company, develops and produces the immensely popular Mochi Ice-Cream. Complainant uses the MIKAWAYA mark to provide and market its goods and services. Complainant claims rights in the mark based on its registration with the United States Patent Office (“USPTO”) (e.g. Reg. No. 1,903,718, registered on Jul. 4, 1995). Respondent’s <mikawaya.com> domain name is identical or confusingly similar to Complainant’s MIKAWAYA mark as it incorporates the mark in its entirety, merely adding the generic top level domain (“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the <mikawaya.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the MIKAWAYA mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <mikawaya.com> domain name to host pay-per-click advertisements.
iii) Respondent has registered and uses the <mikawaya.com> domain name in bad faith. Complainant offered reasonable compensation to purchase the disputed domain name from Respondent, in which Respondent rejected. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MIKAWAYA mark based on the popularity of the mark.
B. Respondent
i) Respondent claims rights or legitimate interests in the disputed domain name as Respondent uses the domain name to post pay-per-click advertising links in connection with its common generic meaning. In addition, Respondent has legitimate interest in the disputed domain name because posting pay-per-click links and reselling commercially viable domain names is a part of its business model.
ii) Respondent claims that the disputed domain name was not registered in bad faith because the disputed domain name incorporated a common generic term and Respondent did not register the disputed domain name with Complainant’s trademark in mind. Respondent contends that the word “Mikawaya” is used widely by businesses all around Japan, not only brewing stores, but also liquor stores, food stores and some other types of stores. See Resp. Annex 2. Furthermore, in a Google search, “Mikawaya” returns more than 1,000,000 results. See Respn. Annex 5. Respondent also provides evidence of other additional domain names not owned by Complainant that contain the MIKAWAYA mark. See Resp. Annex 3.
iii) Respondent claims it did not act in bad faith because it was unwilling to sell the disputed domain name after Complainant initiated an offer. Finally, Respondent claims it did not have actual and/or constructive knowledge of Complainant’s mark prior to registering the disputed domain name.
C. Additional Submissions
Complainant’s Additional Submission
i) Respondent cannot deny that Complainant owns valid and enforceable trademark rights in the MIKAWAYA mark. MIKAWAYA is registered on the principal register (Reg. No 1,903,718), and has been so for more than twenty-five years. See Complaint Exhibit C; see also attached as Exhibit 1 a screenshot from the U.S. Trademark Status & Document Retrieval (“TSDR”).
ii) The term “mikawaya” has no generic or descriptive meaning superior to Complainant’s MIKAWAYA mark, especially considering both parties are located in the United States. Respondent’s reliance on the alleged Japanese generic meaning is an opportunistic attempt to manufacture a legitimate use after the fact. Respondent was not using the domain with the alleged generic meaning in mind before Complainant contacted him. See Complaint Exhibit F. Respondent has offered nothing more than his own argument to suggest otherwise. In the United States, the term “mikawaya” has a high degree of association with Complainant’s mark.
iii) Respondent is charged with constructive knowledge of Complainant’s rights. Despite Registrant’s attempts to argue to the contrary, UDRP panels have recognized the legitimacy of the constructive knowledge doctrine when both parties are located in the United States. Here, Complainant and Respondent both reside in the United States; moreover, both reside in the State of California. Further, as shown in Exhibit 2, a simple Google search of the term “mikawaya” would have immediately noticed Respondent to its use as a well-known trademark had Respondent conducted even a modicum of due diligence before registering the Disputed Domain. Respondent is located nearby to retail outlets that have sold the goods bearing the mark. Attached as Exhibit 6 are screenshots showing the distance between Respondent’s address and the nearest Grocery Outlet.
iv) Complainant presented meta-data from Respondent’s site which included references to the goods associated with Complainant’s trademark and Respondent has provided no rebuttal other than claims of ignorance regarding the technical details of the disputed domain he owns and operates. Respondent’s opportunistic registration of a disputed domain with Complainant’s trademark appears to be typical of his business model, which includes 192 registered domain names, some of which include third-party trademarks. See Complaint Exhibit D; see also attached as Exhibit 8 is an example of one of the 192 domain names associated with Respondent. It is clear that Respondent uses the disputed domain to lure traffic to Respondent’s pay-per-click advertising in order to profit from an association with Complainant.
1. The disputed domain name was created on December 28, 2018.
2. Complainant has established rights in the mark based on its registration with the United States Patent Office (“USPTO”) (e.g. Reg. No. 1,903,718, registered on Jul. 4, 1995).
3. Respondent is located nearby to retail outlets that have sold the goods bearing Complainant’s mark.
4. Meta-data from Respondent’s site include references to the goods associated with Complainant’s mark.
5. The disputed domain name’s resolving website contains links to various advertisements.
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.
Complainant claims rights in the MIKAWAYA mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the MIKAWAYA mark (e.g., Reg. No. 1,903,718, registered on Jul. 4, 1995). See Compl. Ex. C. Therefore, the Panel finds that Complainant has rights in the MIKAWAYA mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <mikawaya.com> domain name is identical or confusingly similar to the MIKAWAYA mark as Respondent incorporates the mark in its entirety and adds the “.com” gTLD. Addition of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the disputed domain name is identical and confusingly similar to Complainant’s MIKAWAYA mark per Policy ¶ 4(a)(i).
While Respondent contends that the disputed domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the MIKAWAYA mark and is not commonly known by the disputed domain name. Lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Domain Admin,” and there is no other evidence to suggest Respondent was authorized to use the MIKAWAYA mark. See Compl. Ex. B. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that the disputed domain name resolves to a website that is offering third-party advertisements. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides a screenshot of the disputed domain name’s resolving website which appears to contain links to various advertisements in order to generate click-through advertising revenue. See Compl. Ex. F. The Panel agrees with Complainant and holds that advertising unrelated third-party services determine this use does not amount to one which confers rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent claims rights or legitimate interests in the <mikawaya.com> domain name as Respondent uses the domain name to post pay-per-click advertising links in connection with its common generic meaning. In addition, Respondent has legitimate interest in the disputed domain name because posting pay-per-click links and reselling commercially viable domain names is a part of its business model.
Complainant counter-contends that Respondent’s opportunistic registration of a disputed domain with Complainant’s trademark appears to be typical of his business model, which includes 192 registered domain names, some of which include third-party trademarks. See Complaint Exhibit D; see also attached as Exhibit 8 is an example of one of the 192 domain names associated with Respondent. It is clear that Respondent uses the disputed domain to lure traffic to Respondent’s pay-per-click advertising in order to profit from an association with Complainant.
Respondent contends that the word “Mikawaya” is used widely by businesses all around Japan, not only brewing stores, but also liquor stores, food stores and some other types of stores. See Resp. Annex 2. Furthermore, in a Google search, “Mikawaya” returns more than 1,000,000 results. See Respn. Annex 5. Respondent also provides evidence of other additional domain names not owned by Complainant that contain the MIKAWAYA mark. See Resp. Annex 3.
Against Respondent’s claims above, Complainant rebuts in its Additional Submission that the term “mikawaya” has no generic or descriptive meaning superior to Complainant’s MIKAWAYA mark, especially considering both parties are located in the United States. Respondent’s reliance on the alleged Japanese generic meaning is an opportunistic attempt to manufacture a legitimate use after the fact. Respondent was not using the domain with the alleged generic meaning in mind before Complainant contacted him. See Complaint Exhibit F. Respondent has offered nothing more than his own argument to suggest otherwise. In the United States, the term “mikawaya” has a high degree of association with Complainant’s mark.
As the Panel agrees with Complainant, it finds that Respondent has failed to rebut the prima face case and has not shown that it has a right or legitimate interest in the disputed domain name. Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Previous panels have determined that, when a complainant initiates an offer for the sale of a disputed domain name, a respondent’s willingness to engage in negotiations for the sale of the domain name does not equate to bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”).
Therefore, the Panel finds that Respondent did not act in bad faith because it was unwilling to sell the disputed domain name after Complainant initiated an offer.
Next, Complainant argues that Respondent attempts to attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to third-party websites. Using a confusingly similar domain name to commercially benefit via pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent hosts links to third party websites in order to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. See Compl. Ex. F. The Panel recalls Complainant’s claims that Respondent’s opportunistic registration of a disputed domain with Complainant’s trademark appears to be typical of his business model, which includes 192 registered domain names, some of which include third-party trademarks. See Complaint Exhibit D; see also attached as Exhibit 8 is an example of one of the 192 domain names associated with Respondent. Complainant contends that Respondent uses the disputed domain to lure traffic to Respondent’s pay-per-click advertising in order to profit from an association with Complainant.
Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s MIKAWAYA mark. Respondent claims it was unaware of Complainant’s marks or business. The Panel recalls that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous MIKAWAYA mark, Respondent had actual knowledge of Complainant’s MIKAWAYA mark.
Complaint further argues in its Additional Submission that Complainant and Respondent both reside in the United States; moreover, both reside in the State of California. Further, as shown in Exhibit 2, a simple Google search of the term “mikawaya” would have immediately noticed Respondent to its use as a well-known trademark had Respondent conducted even a modicum of due diligence before registering the Disputed Domain. Respondent is located nearby to retail outlets that have sold the goods bearing the mark. Complainant presented meta-data from Respondent’s site which included references to the goods associated with Complainant’s trademark and Respondent has provided no rebuttal other than claims of ignorance regarding the technical details of the disputed domain he owns and operates.
Given the totality of the circumstances above, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the MIKAWAYA mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mikawaya.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 31, 2019
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