Parties' contentions
Complainant’s contentions
The Complainant contends that the disputed domain name is identical, or similar to such a degree that it is close to identical, to the dominant character of the Complainant’s rights. This identity, or a similarity bordering with identity, clearly leads to the likelihood of confusion. Moreover, both the Complainant and the Respondent are in the same field of business and both are offering jewellery products and providing retail services featuring jewellery. Accordingly, following this double identity between the marks and the corresponding goods and services, the Respondent created the likelihood of confusion with the Complainant’s rights by registering and using the disputed domain name. The Complainant submits a selection of evidence of the customer confusion.
The Complainant also contends that the Respondent is not affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register any of the Complainant’s rights, or to seek registration of any domain name consisting of or incorporating any element from the Complainant’s rights. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registrations of the relevant Complainant’s rights have long preceded the registration and use of the disputed domain name by the Respondent (July 2021), as well as any of Respondent’s possible trademarks recently obtained. There is a significant customer confusion as to the origin of the relevant products following the use of the disputed domain name by the Respondent. Following that, the Complainant is of the opinion that Respondent’s use of the disputed domain name cannot be conceived as a bona fide offering of goods and services. The Respondent is neither commonly known under the disputed domain name, nor does the word element “Myka” represent its business name. Its actions, namely the entire rebranding, seem rather deliberate, especially in the light of the occurrence of the existing customer confusion. The Complainant, on the other hand, has spent years in developing its presence under its mark, secured the necessary rights (the Complainant’s rights) and is operating under the corresponding business name. The Respondent decided to rebrand solely for the purposes of exploiting the goodwill of the Complainant and the Complainant’s rights. In addition, legitimate, non-commercial or fair use of the disputed domain name cannot be inferred due to the clear intention of commercial gain. Indeed, considering the confusion among the existing customers, it appears that the Respondent has registered and started using the disputed domain name in order to create confusion and free-ride on the reputation of the Complainant and the Complainant’s rights. The fact whether the Respondent may own any recently obtained trademarks bears no significance as the Complainant may clearly prove by evidence its earlier rights due to a prior use in the respective jurisdictions.
Finally, the Complainant contends that it is highly unlikely that the Respondent was unaware of the Complainant’s rights when rebranding and registering the disputed domain name. Moreover, the Complainant is convinced that not only the Respondent was aware of the Complainant’s rights but has also actively chosen the “Myka” mark with the intentions to exploit existing goodwill and renown of the Complainant’s rights. The bad faith is considered to be demonstrated when the Respondent ‘knew or should have known’ of the Complainant’s rights and nevertheless registered a domain name in which it had no rights or legitimate interest. Given the Complainant’s long-lasting presence on the market, a quick search of the term “Myka” on the Internet via Google or any other search engine would have revealed to the Respondent the existence of the Complainant and the Complainant’s rights. The Respondent’s failure to do so is a contributory factor to its bad faith. The Complainant reiterates that the continuous use of the disputed domain name <myka.com> by the Respondent for its business activities, or even the Respondent's passive tolerance of it, is causing a great harm to the Complainant due to the existing customer confusion. The Respondent was approached on 7 September 2021 by the Complainant and informed of the issues that the use of the disputed domain name was causing to the Complainant. Nevertheless, no remedies have been made in that respect. Ignorance on part of the Respondent must therefore be interpreted in a way that the disputed domain name is continuously and intentionally being used in bad faith. The fact that the Respondent holds the disputed domain name which entirely corresponds to the dominant character within the Complainant’s rights without any legitimate interest, indicates that the same has been registered and that it is being used in order to exploit the benefits of the Complainant’s rights and Complainant’s long-lasting presence on the market. It follows that the use of the disputed domain name is aimed to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s rights as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website. In addition, the disputed domain name has been registered or acquired in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Therefore, the Complainant requests the transfer of the disputed domain name.
Respondent’s contentions
Preliminarily, the Respondent submits that the present dispute falls outside the scope of the Policy and requests that the Panel terminate the administrative proceeding pursuant to Paragraph 18(a) of the Rules without issuing a decision on the merits. The present dispute relates to trademark claims outside the scope of the Policy – the parties are currently involved in litigation in Germany and before the EUIPO over the “Myka” mark. The parties are corporate entities selling separate goods to separate consumers in separate markets. The Respondent commenced non-use cancellation proceeding against Complainant’s German trademark registration and deadlines have been set for Complainant to prove use. Instead of filing evidence of use before the German Patent and Trademark Office, the Complainant chose to engage in a multiplicity of proceedings. To wit, even with the Complaint, the Complainant has shown no use of the “Myka” trademark in Germany, and the Respondent expects the Complainant’s mark to be cancelled in due course. The Complainant also chose to file an opposition against the Respondent’s European Union trademark, but not its UK or Australian marks. This fact further highlights that the parties are divergent in relation to the ownership of the “Myka” trademark in some but not all jurisdictions. The Respondent has evidence showing use of the “Myka” mark in various jurisdictions and accompanying goodwill, and documented changes that Complainant had, in mala fide, made to its website and logo after commencement of the German Patent and Trademark Office and court proceedings to look more similar to the Respondent’s site and logo. It would not be proper for the Panel to change the present situation by issuing a decision before the competent authorities, including the German Patent and Trademark Office and the EUIPO have heard the evidence in this case. The Complainant acted in bad faith and should be denied remedy. The Complainant failed to disclose the full picture and opted to pick and choose facts to bring before the Panel to wrestle a favorable decision based on half-truths. The Complainant failed to disclose the full correspondence and the fact that it has filed opposition proceedings and was facing cancellation proceedings in relation to the same registration it has based the Complaint on. The multi-faceted nature of this dispute, including (i) the lack of the Complainant’s use of the “Myka” mark outside of Canada (the Complainant is not the owner of the two marks outside Canada), (ii) the level of inherent distinctiveness of the “Myka” mark is not particularly high and is in use by many third parties on the Internet, (iii) that the disputed domain was not created by Respondent with prior knowledge of Complainant’s very limited trademark rights, and (iv) that the Respondent did not and is not targeting Complainant, lead to that each of these elements, and certainly all them should be fully examined by the competent tribunals/courts, before which the parties are already litigating.
As for the first element, the Complainant contends that Complainant has not established rights in its trademark and therefore Complainant has not met the threshold required of the first element of the Policy. The Respondent indeed challenges the Complainant’s trademark rights and their extent. According to the Respondent the level of inherent distinctiveness of the “Myka” mark is not particularly high and is in use by many third parties on the Internet. Since the domain name is a 4-letter domain name, its distinctiveness is a-priori limited. Myka is a popular first name for girls, thus limiting its level of inherent distinctiveness in relation to goods such as jewellery. The name Myka in Hebrew means, “Who is like God” and is another form of pronunciation for the name Michael (the Complainant founder’s name) in the Hebrew language, where the Respondent is established and operating from. The name also belongs to several famous social media stars and the “Myka” word is used on numerous websites on the Internet.
The Respondent affirms that the extent of Complainant’s alleged rights in the Canadian trademark registration is very limited. The Complainant’s Canadian trademark is a stylized device consisting of an oval surrounding the word “Myka” with a highly-stylized letter “M”. It is arguable that “M” could consist of other letters, or it is simply a design with the letters “yka”. The “Myka” word is not at all clear in the device mark. With reference to the German trademarks the Respondent submits that that they are subject of ongoing cancellation proceedings for non-use in Germany. As for the Complainant’s alleged unregistered common law trademark rights, the Complainant has failed to submit relevant evidence to demonstrate unregistered common law trademark rights as required under the Policy. The materials submitted by Complainant in support of its statement of use are grossly insufficient to prove common law rights in the “Myka” mark in the US and UK. The Complainant does not show the duration and nature of use of the “Myka” mark, the amount of sales and advertising of goods bearing the mark, the degree of actual public recognition and any consumer surveys in the US and UK, despite alleging over 35 and 22 years, respectively, of use of the mark. The document submitted comprises several photographs of goods which are mostly undated; photographs of displays of goods in retail stores in which the dates and locations are not disclosed; article publications of which the name and date of publication are unknown and undated; several screenshots of social media pages in which the Complainant redacted portions not to show the number of followers; and only two copies of redacted invoices dated 13 November 2021, months after the dispute began, for the sum of €121.53 and 9 July 9 2009 to Russia for the sum of 27,904.10 (currency not stated), suggesting this was a one-off transaction. Notably, the logo shown on the invoice issued in November 2021 is “Myka” (device) while the logo shown on the Russian invoice in July 2009 is “Myka (device) Designs Inc.”. Both logos are not registered marks. The Respondent also submits that the Complainant’s pending trademark application is irrelevant and would not by itself establish trademark rights within the meaning of the paragraph 4(a)(i) of the Policy. In addition, Respondent’s trademark application in the US predates Complainant’s application. Lastly, the usage of a domain name <mykadesigns.com> does not in itself confer trademark rights on the Complainant since the basis of a UDRP complaint is for the Complainant to establish registered or unregistered trademark rights in the disputed domain name.
The Respondent argues that it has rights and legitimate interests in the domain name and that Complainant’s failed to show the second element paragraph 4(a) of the Policy. The Respondent affirms to have registered the “Myka” mark in Australia and UK without Complainant’s objection (with pending applications in the US, Europe and Israel) and explained its rebranding process from “My Name Necklace” to “Myka”. The Respondent also asserts to have shown through its evidence that, before any notice of the dispute, it was making use of and preparing to use the domain name in connection with a bona fide offering of goods and services. The Respondent developed its “Myka” mark without knowledge of the Complainant’s mark. It did not target the Complainant and no evidence was brought to show such targeting. As the evidence shows, the Respondent engaged a domain name broker to negotiate and purchase the disputed domain name and launched its own independent website under such domain name. The Respondent has been advertising its “Myka” mark on its own unique line of goods on social media and has spent an estimated USD10 million on advertising since July 2021. The Respondent has been operating the website under the domain name and providing bona fide goods and services to customers in countries other than Canada. The Respondent highlights the difference in the type of goods and services provided by the Respondent and the Complainant. While the Complainant appears to sell jewellery with heavy semi-precious stones, the Respondent specializes in minimalist jewellery with name and/or message-engraving customization services. The Complainant does not offer customization services on its jewellery. The Complainant has a B2B business model while the Respondent has a B2C business model. Given that the styles and designs of the Respondent’s and the Complainant’s jewellery are so dissimilar, the target consumers of each party are likewise different and do not overlap. There is therefore little to no likelihood of confusion between the Respondent and the Complainant on the part of consumers. In this respect, the document submitted by the Complaint shows that there is no actual confusion. First, it is highly redacted and therefore is of little use. Second, it does not show a single customer approaching the Complainant before or at the time of the sale and therefore cannot show pre-sale confusion. Rather, all the examples relate to post-sale issues sent by people to a provider of the Complainant called Chatra, for reasons unknown. The evidence shows no indicia of cybersquatting intent in this case and clear rights held and used by the Respondent on its website, social media and other channels of trade. The Respondent has prior use, demonstrable preparations to use the disputed domain name, in connection with a bona fide offering of goods or services, including trademark ownership and no targeting of Complainant.
Finally, the Respondent contends that the disputed domain name has not been registered and used in bad faith. The Complainant misconstrues the Policy and makes unsubstantiated arguments. This case is not a cybersquatting or cyberpiracy case. None of the Policy’s paragraph 4(b) non-exclusive scenarios apply here and no evidence is brought to show bad faith registration or use because none exists. The Respondent did not target Complainant in any way. The Respondent did not purchase the disputed domain name to sell it to the Complainant nor to any third party. The Respondent is using the disputed domain name to sell its own unique and distinct line of goods without any reference or connection to the Complainant. The Complainant has not supported its bare assertions with any evidence and has not established that the Respondent has registered the disputed domain name in bad faith. The evidence shows that the Respondent did not intentionally attempt to attract, for commercial gain, Internet users to its website, 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. The Respondent has its own distinct website, sells different personalized jewellery to consumers, in jurisdictions that Complainant does not operate in. If the evidence shows anything, it is that the Complainant has changed its own website since September 2021 to resemble more and more the Respondent’s website, supposedly with the aim to support its groundless claims. Since the dispute arose, the Complainant has stopped using its logo and rebranded after the Respondent launched its website, all to now claim that the Respondent was targeting the Complainant when the facts show that Complainant has engaged in reverse hijacking of the domain name. The Complainant’s statement that the Respondent “actively chose the mark “MYKA” with the intentions to exploit the existing goodwill and renown of the Complainant’s rights” is false and unsupported by any evidence whatsoever; but it also goes to show that the Complainant’s sole intent in filing the Complaint was to abuse the Policy. The Complainant’s attempt to imply constructive knowledge in this case is misplaced. The “knew or should have known” doctrine is only inferred in certain circumstances, which are inapplicable here since the Complainant’s mark has, if at all, limited reputation in Canada, but none outside Canada, as evidenced from the Complainant’s submission of the two invoices, notwithstanding over an alleged 35 years of operation. Complainant is certainly not known in Israel nor Hungary, where the Respondent is based. Given that the disputed domain name is also a short popular name of a girl in the Hebrew language, and is used by young Internet users on social media led to its choice by the Respondent. The Respondent never attempted to pass itself off as the Complainant or sell the disputed domain name to the Complainant or any third party. The Respondent has been conducting its own business separately and without reference to the Complainant, and has never imitated the Complainant, its brand, and/or its goods. In conclusion, the Panel should reject Complainant unsupported allegations and conclude that Complaint fails on the third element and that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.
Therefore, the Respondent requests, preliminarily, to terminate the administrative proceeding pursuant to Paragraph 18(a) of the Rules without issuing a decision on the merits as the dispute falls beyond the scope of the UDRP. In case a decision on the merits is taken, it requests the Panel to deny the Complaint for the reasons mentioned above and state in its decision that the Complainant brought this action in bad faith, constituting Reverse Domain Name Hijacking (“RDNH”) under the Policy.
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