WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kampachi Worldwide Holdings, LP v. Registration Private, Domains by Proxy, LLC / Robin Coonen, Blue Ocean Mariculture, LLC

Case No. D2021-0371

1. The Parties

Complainant is Kampachi Worldwide Holdings, LP, United States of America (“United States”), represented by Balloun Law Professional Corporation, United States.

Respondent is Registration Private, Domains by Proxy, LLC, United States / Robin Coonen, Blue Ocean Mariculture, LLC, United States, represented by Orrick, Herrington & Sutcliffe, LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <kingkampachi.com> 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 February 5, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. On February 26, 2021, Respondent requested an extension of time to file a Response. Respondent was granted an automatic four calendar day extension of time to file a Response under paragraph 5(b) of the Rules. The Response was filed with the Center March 5, 2021.

The Center appointed Brian J. Winterfeldt, Scott R. Austin, and Martin Schwimmer as panelists in this matter on April 20, 2021. The Panel finds that it was properly constituted. Each member of 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

Both Complainant and Respondent are in the business of aquaculture, including the sale of a variety of fish of the species Seriola rivoliana, which is commonly known as “kampachi” or “kanpachi” (variants in spelling arise from different transliterations from the Japanese name), among other common names (hereinafter, “kampachi”). Complainant and Respondent are direct competitors. In the summer and fall of 2018, Complainant engaged in a non-public market study aimed at generating a viable brand name, trade name, and/or trademark for its production and sale of kampachi. On September 7, 2018, Complainant’s lead marketing and public relations director sent an email to certain principals of the company inviting them to an online meeting on September 21, 2018 to ultimately choose the brand and tradename from a final pool of possible designations. The prospective designations that were to be considered in that meeting were “King Kampachi”, “Kabo Kampachi”, “King Jack Kampachi”, “Kano Kampachi”, and “Guapo Kampachi.” These proposed names were identified in the September 7, 2018 email. During the September 21, 2018 meeting, Complainant’s principals ultimately chose KING KAMPACHI as their preferred trademark.

Shortly after the September 21, 2018 meeting where this decision was made, Complainant sought to register the disputed domain name <kingkampachi.com>, only to discover that it had already been registered on September 14, 2018. At that time, Complainant also discovered that the additional domain names <kingjackkampachi.com>, <kanokampachi.com>, and <kabokampachi.com> had all also been registered – all within hours of the registration of the disputed domain name on September 14, 2018. All of these domain names were registered through the same registrar and proxy registration service. Complainant later confirmed that all of these domain names had been registered by Respondent. Some of these registrations have since expired, but others remain active including the disputed domain name.

Complainant filed an application to register the KING KAMPACHI trademark (“KING KAMPACHI Mark”) in the United States on September 20, 2019 claiming May 31, 2019 as the date of first use of the mark in United States commerce. Complainant secured the registration for the KING KAMPACHI Mark on July 21, 2020 (US registration number 6,105,733); “kampachi” is disclaimed.

The disputed domain name redirects Internet users to Respondent’s website located at the <bofish.com> domain name, where Respondent advertises the sale of kampachi, which it refers to as “Hawaiian Kanpachi”.

Based on these same operative facts, on December 6, 2019, Complainant filed a lawsuit against Respondent in United States District Court for the District of Hawaii, alleging violation of the Anticybersquatting Consumer Protection Act (“ACPA”), unfair trademark competition, civil conspiracy, trade secret misappropriation, and violation of the Hawaii Uniform Trade Secrets Act. However, Complainant dismissed the suit without prejudice on May 1, 2020.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s KING KAMPACHI Mark because it is wholly and identically incorporated in the disputed domain name.

Complainant also posits that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant argues that there is no evidence that Respondent is making any use or made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Complainant points to the fact that Respondent has always marketed Seriola rivoliana as “kanpachi” instead of “kampachi” to support its contention that Respondent never intended to use the disputed domain name in connection with any bona fide offering of goods and services. Rather, Complainant alleges that Respondent is using the disputed domain name solely to divert traffic of users searching for Complainant’s website. Complainant notes that Respondent did not use the disputed domain name for at least a year and a half. According to Complainant, only after Complainant’s voluntary termination of the prior related lawsuit, Respondent at some time began forwarding the disputed domain name to Respondent’s website at <bofish.com> in an apparent attempt to divert Internet users who may be looking for Complainant’s products sold under its KING KAMPACHI Mark. Complainant further posits that Respondent has never been commonly known by the disputed domain name nor is Respondent using it in connection with a legitimate noncommercial or fair use.

Lastly, Complainant posits that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent’s sole purpose for registering and using the disputed domain name is to disrupt Complainant’s business by preventing Complainant from reflecting its KING KAMPACHI Mark in a corresponding domain name and diverting Internet traffic away from Complainant’s website to that of Respondent, a competitor. This, according to Complainant, can be deduced from the fact that the disputed domain name and other domain names incorporating various alternative proposed trademarks contemplated by Complainant were registered by Respondent only a week after Complainant’s lead marketer sent the email listing those prospective brand names to certain principals of Complainant. Complainant states that confidential information was improperly disclosed to Respondent. According to Complainant, that the disputed domain name merely redirects users to Respondent’s website only reinforces Complainant’s contention about Respondent’s bad faith use and registration. According to Complainant, Respondent is also in the business of aquaculture, specifically relating to the production of Seriola rivoliana under the common name kanpachi (with an “n”) and the trademark and trade name “Hawaiian Kanpachi,” which it sells in interstate (and possibly international) commerce. According to Complainant, the difference in spelling is important because Respondent publicly takes specific pride in spelling and pronouncing the term kanpachi using the coronal nasal “n” as closest to the Japanese pronunciation of the word (versus using the bilabial nasal “m” in the near-identical synonym kampachi as used by other consumers and persons in the industry, including Complainant). Respondent’s explanation of how the fish Seriola rivoliana relates to the Japanese name “kan pachi” is found on its website.

B. Respondent

Respondent contends that Complainant cannot satisfy the first element of paragraph 4(a)(i) of the Policy because Complainant did not have any rights to the KING KAMPACHI designation at the time the disputed domain name was registered. Respondent points out that Complainant only decided to adopt the designation a week after the disputed domain name’s registration.

Respondent also posits that it has a legitimate interest in the disputed domain name. Respondent argues that it has a legitimate interest in using the disputed domain name because the terms “king” and “kampachi” as used in the disputed domain name are used in a descriptive sense. Respondent claims that “kampachi” is a common name for the Seriola rivoliana species of fish and that “king” is a descriptive term frequently used in connection with types of fish, such as in the examples “king salmon” and “king mackerel”, to refer to iterations of the particular fish species that are larger than usual. According to Respondent, Complainant is attempting to take a descriptive term that is used in accordance with its common meaning out of the public domain and prevent others from using the common name for the type of fish that Complainant and Respondent both sell. Respondent disputes that Complainant has rights in “king kampachi” as a trademark or service mark even now because it is merely descriptive or generic for a type of fish. Respondent points to use of the term “King Kampachi” on Complainant’s own website, which refers to a type of fish rather than a brand.

Respondent further argues that because Complainant did not have any trademark rights to “King Kampachi” at the time the disputed domain name was registered, Respondent could not have registered the disputed domain name in bad faith. Respondent argues that it need not provide a reason for registering the disputed domain name, but asserts that Complainant’s allegation that Respondent learned of Complainant’s prospective brand names is speculative and unsubstantiated. Respondent asserts that even if Complainant could show (which it cannot) that Respondent did learn of the fact that Complainant was considering certain terms to describe their fish nothing precludes Respondent from registering a domain name with descriptive, common terms. Respondent argues that any presumption that the registration was not in bad faith because it occurred prior to any trademark rights can only be overruled in “exceptional cases” – which this is not. According to Respondent, an “exceptional case” would require Complainant to put forth evidence that it was “well known” that Complainant intended to adopt the mark before the Respondent registered the domain name. Respondent further asserts that its registration of the disputed domain name could not have been in bad faith because “king kampachi” is descriptive of Respondent’s offerings. According to Respondent, the purported “finalists” in Complainant’s secret market study were all comprised of descriptive terms in connection with the kampachi business: “kano kampachi” (a transposition of letters from Kona Kampachi), “kabo kampachi” (a variation on “Cabo” San Lucas, Mexico, where kampachi is farmed), “king kampachi” (reminiscent of “king salmon” or “king mackerel”), and “king jack kampachi” (also reminiscent of “king mackerel” and “jack mackerel”).

Respondent similarly argues that it is not using the disputed domain name in bad faith because the disputed domain name <kingkampachi.com> describes the type of fish that Respondent is in the business of producing and marketing, namely kampachi fish, including large, or “king kampachi” and that such descriptive use cannot be in bad faith. Respondent goes on to allege that other hallmarks of bad faith use are absent in this case, including an offer to sell the disputed domain name at a high price or a pattern of registering domain names containing the trademarks of others by Respondent.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. WIPO Overview 3.0, section 1.1.3. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. Id. Here, Complainant has provided evidence that it has rights in the KING KAMPACHI Mark through its United States trademark registration, cited above.

With Complainant’s rights in the KING KAMPACHI Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s KING KAMPACHI Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

Here, Complainant’s KING KAMPACHI Mark is fully and identically incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing trademark rights in the KING KAMPACHI Mark and showing that the disputed domain name is identical or confusingly similar to this mark.

B. Rights or Legitimate Interests

Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the burden shifts to Respondent to produce evidence demonstrating rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the domain name:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Further, to support a claim to rights or legitimate interests under the Policy, the use of a disputed domain name must in any event not be abusive of third-party trademark rights. In some cases therefore, panels assess the second and third UDRP elements together, for example where clear indicia of bad faith suggest there cannot be any respondent rights or legitimate interests. In such cases, panels have found that the facts and circumstances of the case would benefit from a joint discussion of the policy elements. See WIPO Overview 3.0, section 2.15. Here, the Panel’s discussion of the second UDRP element should be considered together with its discussion of the third UDRP element below.

It is uncontested that Respondent is not commonly known by the disputed domain name, and that it is not making a noncommercial use of the disputed domain name, since the disputed domain name redirects Internet users to Respondent’s commercial website. The inquiry with respect to the second UDRP element, therefore, focuses on whether, before any notice of this dispute, Respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

In this case, Complainant contends that Respondent registered the disputed domain name because of its significance with respect to Complainant’s then-nascent, but now established, trademark rights in the KING KAMPACHI Mark. Respondent, however, contends that it registered the disputed domain name purely because it has dictionary meaning, in order to use it in its descriptive sense in connection with its own related goods. UDRP panels have recognized that registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; prior UDRP panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. WIPO Overview 3.0, section 2.10.1. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. Id. UDRP panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning. Id.

Here, the Panel agrees with Respondent that the term “king kampachi” may be descriptive of a fish belonging to the species Seriola rivoliana that is relatively larger than other fish within the species, in a similar way as other fish and seafood are described using the adjective “king” plus the common name of the species (e.g. king salmon). Therefore, Respondent may have rights or legitimate interests to the disputed domain name based on an alleged descriptive meaning, but only if Respondent (1) establishes that the name was arguably descriptive when it registered the name; (2) is genuinely using the disputed domain name in connection with the relied-upon descriptive meaning; and (3) is not trading off third-party trademark rights or with the intention to trade off of or interfere with such third-party trademark rights. The Respondent does not appear to have carried its burden on any of these contentions.

As established in the record before the Panel, the disputed domain name was registered one week before Complainant chose to adopt KING KAMPACHI as its trademark, but shortly after Complainant communicated its intent, ostensibly privately to certain internal personnel, to consider KING KAMPACHI as a possible trademark, among other alternatives. According to Complainant’s own registration for KING KAMPACHI, Complainant did not start using the KING KAMPACHI Mark in commerce until May 31, 2019, more than one year after Respondent had registered the disputed domain name. Complainant also did not provide any evidence of any use of KING KAMPACHI as its trademark before May 31, 2019. Furthermore, Respondent does sell kampachi fish through the website to which the disputed domain name resolves, although Respondent’s website uses the alternative spelling “kanpachi” and generally refers to its product as “Hawaiian Kanpachi”. Respondent’s argument that the term is descriptive is undercut somewhat by the fact that it uses neither “King Kampachi” nor “King Kanpachi” on its website, to inform Internet users searching using the term, that “King Kampachi” is an alternate descriptor for Respondent’s offering. Nevertheless, superficially, such use of a domain name qualifies as a bona fide offering of goods and services as long as the domain name is being used in connection with the relied-upon dictionary meaning of the terms in the domain name. See, e.g., Dollar Bank, Federal Savings Bank v. Host Master / Jason Duke, WIPO Case No. D2016-0701 (finding that Respondent had rights or legitimate interests to <dollarbankaccount.com> since respondent offered services to assist Internet users to set up bank accounts which would receive US dollars for little or no fee). These factors weigh (minimally) in Respondent’s favor.

On the other hand, there are compelling facts here that are indicative of a concerted effort by Respondent to disrupt Complainant’s business through the strategic preemptive registration of several domain names corresponding to certain of the trademarks Complainant was considering, as discussed in Complainant’s email of September 7, 2018, including the disputed domain name. Complainant’s evidence here is circumstantial, but probative – Complainant’s internal communication concerning the possible trademarks was sent on September 7, 2018 (a copy of which was provided to the Panel); exactly a week later, on September 14, 2018, Respondent registered not just the disputed domain name, but also the domain names <kingjackkampachi>, <kabokampachi.com>, and <kanokampachi.com> – each of which corresponds exactly to other marks Complainant was considering. It is telling, in the Panel’s view, that the overwhelming majority of the Response focuses on the claimed descriptive nature of the disputed domain name and that “[Respondent] registered the [disputed] domain name first,” and yet that little attention is directed to answering the serious allegations of improper knowledge of Complainant’s plans leveled by Complainant; Respondent’s argument to this point is simply that “Complainant’s allegations on this are unsubstantiated [and that] Complainant alleges, without support, that somehow … Respondent learned of Complainant’s prospective brand names.” Respondent argues that each of these other domain names also has a descriptive meaning, just as it argues the disputed domain name’s descriptive meaning. But the Panel is not convinced that all of these domain names are merely descriptive in nature, and it defies all reason to believe that this series of registrations by Respondent was mere coincidence. Further, the fact that Complainant successfully registered its KING KAMPACHI Mark seriously undermines Respondent’s arguments as to mere descriptiveness.

It is not clear how Respondent came to learn of Complainant’s trademark plans. But it seems clear that Respondent did by some means learn of these plans, and that Respondent acted on that specific and actual knowledge by registering the disputed domain name (and the three other domain names based on the prospective trademarks identified by Complainant). This activity appears to have been precipitated not because of any purported descriptive meaning(s) of these domain names, or to use the domain names legitimately in connection with Respondent’s own offering of goods or services based on any descriptive meaning, but to specifically interfere with Complainant’s business by preemptively registering domain names matching trademarks that Complainant was considering adopting, including the disputed domain name which corresponds to a trademark Complainant ultimately adopted and successfully registered. Other explanations offered by Respondent appear to be post-hoc rationalizations that run counter to the evidence of Respondent’s actual knowledge of Complainant’s plans. Respondent also does not contest Complainant’s contention that Respondent only activated the disputed domain name following the withdrawal of the lawsuit filed by Complainant, which undermines Respondent’s argument that its intentions from the beginning were to use the disputed domain name for its purported descriptive meaning. These factors weigh in Complainant’s favor

On balance, we believe that Complainant has met its burden in showing that it is more likely than not that Respondent registered the disputed domain name to opportunistically disrupt Complainant’s commercial activities as a competitor based on a trademark Complainant was considering adopting, and not for any legitimate bona fide offering of goods or services based on any purported descriptive meaning of the disputed domain name.

The Panel therefore finds that Complainant has established, by a preponderance of the evidence, that Respondent lacked any rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate an assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Complaints alleging the types of conduct described in UDRP paragraph 4(b) should be supported by arguments and available evidence such as dated screenshots of the website to which the disputed domain name resolves or correspondence between the parties. Even in cases of respondent default, panels have held that wholly unsupported conclusory allegations may not be sufficient to support a complainant’s case. However, UDRP panels have been prepared in appropriate cases to draw inferences concerning a respondent’s bad faith intent from the relevant facts and circumstances.

Furthermore, given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. WIPO Overview 3.0, section 3.1.

In addition or alternatively to the specific circumstances outlined in UDRP paragraph 4(b), particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen TLD (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1.

Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.0, section 3.8.1. However, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. WIPO Overview 3.0, section 3.8.2.

Here, everything about Respondent’s actions smell fishy. As discussed above, evidence on record strongly suggests that Respondent registered the disputed domain name based on some kind of inside knowledge of Complainant’s brand name selection plans and nascent trademark rights. Factors indicating Respondent’s bad faith registration include: the content of the website to which the domain name directs; the timing and circumstances of the registration as discussed above following Complainant’s marketing email of September 7, 2018 detailing proposed new trademarks; no credible explanation for Respondent’s choice of the disputed domain name in light of the circumstances as discussed above; and the indicia generally suggesting that Respondent had specifically targeted Complainant by registering domain names, including the disputed domain name, corresponding to marks under Complainant’s consideration. See WIPO Overview 3.0, sections 3.2.1 and 3.8.2; see also, e.g., INTERTEX, Inc. v. Shant Moughalian, Contess, Inc., WIPO Case No. D2017-0480 (finding that registration of domain names by Complainant’s former employee who had inside knowledge of new trademarks under consideration by Complainant and then leaving to form competing company was in bad faith, even though Complainant did not obtain protection for those marks until after the domain names had been registered); 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567 (ordering transfer of domain name registered by a former distributor of the complainant who subsequently became a competitor and registered domain names prior to complainant registering allegedly descriptive marks on the supplemental register, where the respondent’s non-use of these terms on any website was a factor in finding for complainant); cf. Istanbul Kültür Üniversitesi Türkiye Cumhuriyeti v. Burak Kilanc, Kilanc Family, WIPO Case No. D2016-0391(similar).

Additionally, a panel may make adverse inferences from the manner in which a respondent makes its arguments. See BML Group Limited v. Rikard Beach, WIPO Case No. D2015-1897. Here Respondent argues that all four domain names it registered on the same day are descriptive. As stated above, the Panel does not agree. Respondent’s arguments as to why “kabo kampachi” and “kano kampachi” are descriptive are not – based on the totality of circumstances presented – plausible.

On the whole, Respondent’s selection of domain names identical to four of the prospective brand names generated through Complainant’s market study simply seems too extraordinary to be a mere coincidence.

As prior UDRP panels have noted, what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trademark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use. See, e.g., BML Group Limited v. Rikard Beach, Proxy My Whois AB, WIPO Case No. D2015-1897 (citing St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601). The evidence in this case suggests that this was precisely the case here: Respondent learned of Complainant’s plans to create a new (and competing) brand of kampachi; Respondent registered domain names exactly matching brands Complainant was considering (i.e., domain names that were identical to terms that were soon to be used in a trademark sense by Complainant), including the disputed domain name; and Respondent registered the disputed domain name with knowledge of that impending trademark use and with the intention of taking advantage thereof. Respondent does not provide a compelling rationale for these activities (and given the pattern of multiple registrations, the Panel is not convinced by Respondent’s arguments as to the purported descriptive meaning of the domain names), and the Panel finds, based on all the available evidence, that Respondent obtained the disputed domain name to gain a commercial advantage over its competitor, Complainant, by disrupting Complainant’s ability to register a key domain name matching its new mark and later using the domain name to direct Internet users to Respondent’s website rather than Complainant’s.

These activities by Respondent fit within the scenarios under UDRP paragraphs 4(b)(iii) and 4(b)(iv) and more generally constitute registration and use in bad faith within the meaning of the Policy, taking into consideration the non-exhaustive factors described above as applied to the facts present in this case. Accordingly, the Panel finds that Complainant has met its burden of establishing, by a preponderance of the evidence, that Respondent registered and used the disputed domain name in bad faith.

The Panel notes in closing that it has given careful consideration to the arguments made by Respondent about the descriptiveness of Complainant’s mark and the disputed domain name; however, the Panel is not prepared to second guess the grant of a trademark registration in reaching its conclusion, and notes that any such claims may be explored by Respondent in another forum such as at the USPTO or in a competent court.

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 <kingkampachi.com> be transferred to Complainant.

Brian J. Winterfeldt
Presiding Panelist

Scott R. Austin
Panelist

Martin Schwimmer
Panelist
Date: May 5, 2021