Niwaki.shop

The timeline behind niwaki.shop

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Niwaki Ltd. v. RogerJodi Claim Number: FA2501002137705 PARTIES Complainant is Niwaki Ltd. ("Complainant"), represented by Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is RogerJodi ("Respondent"), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <niwaki.shop>, registered with Sav.com, LLC. PANEL 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. Paul M. DeCicco, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on January 30, 2025; Forum received payment on January 30, 2025. On January 30, 2025, Sav.com, LLC confirmed by e-mail to Forum that the <niwaki.shop> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 January 31, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2025 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@niwaki.shop. Also on January 31, 2025, 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. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On February 21, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant contends in part as follows: Complainant, Niwaki Ltd., is a United Kingdom limited company and owns the NIWAKI mark used in connection with products sold in physical and online retail stores. The NIWAKI mark is used and registered in connection with gardening tools but also enjoys common law rights in the United States for online retail services through its use on the Niwaki website. Complainant has a federal priority date for its United States registration dating back to 2016. Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Respondent's at-issue domain name is confusingly similar to the NIWAKI mark because Respondent's domain name wholly incorporates Complainant's NIWAKI trademark with only the descriptive ".shop" gTLD added. Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent has no legitimate interest in the infringing domain name, as it does not sell authentic NIWAKI products and is not authorized to use the NIWAKI mark. Respondent's use of <niwaki.shop> has "no connection with a bona fide offering of goods and services." Respondent's use of the NIWAKI mark on its <niwaki.shop> website to pass itself off as Complainant where it is purporting to sell Complainant's goods is not sufficient to establish a connection with a bona fide offering of goods or services under the Policy. Respondent has not been commonly known by the at-issue domain name. Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark rights at-issue. Respondent's website exists to confuse consumers and have Respondent benefit from the significant goodwill that NIWAKI has already achieved. Respondent deceitfully attracts internet traffic to its website and/or otherwise diverts internet users to its website which appears to be a website selling fraudulent goods, making visitors believe it is purchasing from Complainant's genuine website while potentially stealing financial and personal information or selling false goods. Respondent registered and used the at-issue domain name in bad faith. Respondent's domain name serves as nothing more than a means for infringement or outright fraud because the at-issue domain name exists solely to attract internet traffic to a copycat website that is selling unauthorized or fake goods and could also be a means to steal visitors' financial and personal information. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has trademark rights in the NIWAKI mark. Respondent registered the at-issue domain name after Complainant acquired rights in NIWAKI. Respondent uses the at-issue domain name to address a website mimicking Complainant's genuine website to pass itself off as Complainant and there purport to sell Complainant's goods. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar The at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Complainant demonstrates rights in the NIWAKI mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Respondent's <niwaki.shop> domain name consists of Complainant's NIWAKI trademark merely followed by the ".shop" top-level domain name. The differences between Complainant's trademark and Respondent's domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <niwaki.shop> domain name is confusingly similar to Complainant's NIWAKI trademark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Domain Administrator / Registry Services, LLC, FA2 2038314 (Forum July 26, 2023)("The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i)."). Rights or Legitimate Interests 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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively. Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name). The WHOIS information for the at-issue domain name identifies the registrant of <niwaki.shop> as "Roger Jodi" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <niwaki.shop>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Respondent attempts to pass itself off as Complainant. Respondent uses the at-issue domain name to address a website that mimics the look and feel of Complainant's official website while purporting to sell Complainant's products. Respondent's <niwaki.shop> website thus deceives consumers into falsely believing that Respondent is somehow affiliated with Complainant. Respondent's use of the <niwaki.shop> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant") Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <niwaki.shop>. Registration and Use in Bad Faith As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to the Policy. As mentioned above, Respondent uses the at-issue domain name to address a website mimicking Complainant's genuine website. Notably, Respondent's copycat website displays Complainant's mark and logo as a masthead. Respondent's use of <niwaki.shop> to attempt to pass itself off as being related to Complainant is disruptive to Complainant's business and is intent on attracting internet users looking for Complainant to Respondent's website so that Respondent may capitalize on the confusion Respondent created between its <niwaki.shop> domain name and Complainant's NIWAKI trademark. Respondent's use of <niwaki.shop> demonstrates Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) . See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting); see also, Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) ("Respondent's use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant's mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).") Moreover and although not specifically suggested by Complainant, Respondent registered the <niwaki.shop> domain name with actual knowledge of Complainant's trademark rights in NIWAKI. Respondent's prior knowledge of Complainant's rights is apparent from Respondent's use of the domain name to pose as Complainant using the at-issue domain name and its related website. Respondent's registration of <niwaki.shop> with knowledge of Complainant's trademark rights in NIWAKI further indicates Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <niwaki.shop> domain name be TRANSFERRED from Respondent to Complainant. Paul M. DeCicco, Panelist Dated: February 21, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.