Grigorius Holdings, SIA v. Yuanxia Fu / Dnbiz Limited
Claim Number: FA1502001604366
Complainant is Grigorius Holdings, SIA (“Complainant”), represented by Gabriel Miller of Law Office of Gabriel Miller, New York, USA. Respondent is Yuanxia Fu / Dnbiz Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexyjapanese.com>, registered with Moniker Online Services LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015.
On February 11, 2015, Moniker Online Services LLC confirmed by e-mail to the Forum that the <sexyjapanese.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 February 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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 February 16, 2015, 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 March 9, 2015.
A timely Additional Submission was received from Complainant on March 16, 2015.
On March 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 issues 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has registered the sexy JAPANESE mark with the Republic of Latvia Patent Office (e.g., Reg. No. M 67 889, registered October 20, 2014, applied for on May 20, 2014). Complainant also asserts unregistered common law rights in the mark as of at least May 28, 2012. The mark is used on or in connection with telecommunications services, education, training, translation services, and sign language translation. The <sexyjapanese.com> domain name is confusingly similar to the sexy JAPANESE mark because the domain name contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent in possession of licensing rights that would allow him the use the sexy JAPANESE mark in domain names. Further, the resolving webpage contains links unrelated to goods or services offered by Complainant.
3. Respondent has registered and used the disputed domain name in bad faith. Specifically, Respondent is attempting to commercially benefit from attracting Internet users to its confusingly similar website.
B. Respondent’s Contentions
1. Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
2. Respondent claims it has rights or legitimate interests in the disputed domain name because it is using it do provide links to online resources for groceries and similar goods, which Respondent presumably deems a bona fide offering or goods or services.
3. Respondent argues that it has not registered or used the disputed domain name in bad faith. Respondent argues that disputed domain name consists of common descriptive terms, and that the registration of the domain name predates Complainant’s use of the sexy JAPANESE mark.
C. Complainant’s Additional Submission
1. Respondent’s ownership of the disputed domain name does not predate Complainant’s registration of the sexy JAPANESE mark, because Respondent did not acquire the disputed domain name until August 2, 2015 [sic]. Complainant contends that the disputed domain name was registered in 1998; however, it was registered by a different user and was not acquired by Respondent until 2015. The Panel observes that Complainant likely means to allege the domain name was registered in August 2014 by this Respondent.
Complainant has failed to establish rights in a trademark that predate the registration of the domain name.
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 has registered the sexy JAPANESE mark with the Republic of Latvia Patent Office (e.g., Reg. No. M 67 889, registered October 20, 2014, applied for on May 20, 2014). The mark is used on or in connection with telecommunications services, education, training, translation services, and sign language translation. The Panel finds that registration with a trademark authority is sufficient to establish rights in a trademark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant also asserts unregistered common law rights in the sexy JAPANESE mark. The Panel notes that registration with a governmental authority or entity is not required to obtain rights in a trademark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant asserts that its mark has acquired secondary meaning and has been in use since at least May 28, 2012. In its additional submission at p. 3, Complainant has provided a link to a YouTube video—which was uploaded on May 28, 2012—that shows the sexy JAPANESE logo in the upper left corner.
The Panel notes that this is the extent to which Complainant has provided evidence that the mark had acquired secondary meaning. Therefore, the Panel finds that the sexy JAPANESE mark had not acquired secondary meaning, since no evidence of sales, advertising, or expenditures was provided. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
Accordingly, the Panel concludes that Complainant’s rights in the sexy JAPANESE mark can only date back to October 20, 2014, the day on which the mark was registered with the Republic of Latvia Patent Office.
Rights and Legitimate Interests
Given the Panel’s finding below on bad faith, it’s unnecessary for the Panel to reach this issue. 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)
Registration and Use in Bad Faith
Since Complainant failed to establish common law or unregistered rights in the sexy JAPANESE mark, its rights can only date back to the mark’s registration date of October 20, 2014. The registration date for the <sexyjapanese.com> domain name is January 2, 1998. Therefore, because Respondent’s registration date for the disputed domain name predates Complainant’s rights in the sexy JAPANESE mark, Respondent did not register the domain name in bad faith under Policy ¶ 4(a)(iii). See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the date on which complainant acquired rights in its trademark, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
The Panel finds that Respondent did not register the domain name in bad faith.
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 <sexyjapanese.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
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