Decision for dispute CAC-UDRP-106878

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is a registered owner of the following trademark containing the word element "GENSHIN IMPACT”:

- GENSHIN IMPACT (word), International (WIPO) trademark, registration date 11 August 2021, trademark registration no. 1652156, registered for goods and services in the international classes 9, 14, 16, 20, 25, 35, 38, 41, 42, and 45;

besides other international and national trademarks consisting of the " GENSHIN IMPACT " denomination (collectively referred to as "Complainant's Trademarks").

Furthermore, the Complainant owns numerous domain names, including the wording “GENSHIN IMPACT”, such as <genshinimpact.com> registered on 7 June 2019.

The Complainant is a Chinese video game development company which was founded in 2011 and today have around 5000 employees.

Genshin Impact is an action role-playing game developed and launched by the Complainant and its affiliate. It was released for Android, iOS, PlayStation 4, and Windows in 2020, and on PlayStation 5 in 2021. The game features an anime-style open-world environment and an action-based battle system using elemental magic and character-switching.

The game Genshin Impact has received positive reviews and, across all platforms, the game had a gross revenue of more than millions of US dollars by the end of 2022 and has received substantial attention in the media. It also has received several awards.

The disputed domain name was registered on 21 January 2022 and is held by the Respondent.

The disputed domain name website (i.e., a website available under an internet address containing the disputed domain name) automatically redirects to a third-party website under the URL https://genshinimpactmerch.shop, which offers goods and other merchandise related to Genshin Impact for sale.

COMPLAINANT:

A) CONFUSING SIMILARITY

The Complainant states that:

• The disputed domain name is identical to Complainant's Trademarks as they both incorporate the “GENSHIN IMPACT” word element of the Complainant’s trademarks in its entirety and the “.store” element must be disregarded.
• The Complainant refers to previous domain names decisions in this regard.
• Thus, according to the Complainant the confusing similarity between Complainant’s trademarks and the disputed domain name is clearly established.
  
  

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

• The Respondent has not been commonly known by the disputed domain name.
  
  
• The Complainant has not authorized, permitted, or licensed the Respondent to use the Complainant’s trademarks in any manner. The Respondent has no connection or affiliation with the Complainant. whatsoever. On this record, Respondent has not been commonly known by the disputed domain name.

• Furthermore, the disputed domain name resolves to a third-party website available at URL https://genshinimpactmerch.shop while:

1. 1. The Complainant has no relationship with the owner or operator of https://genshinimpactmerch.shop/. The operator is infringing the Complainant’s trademark rights;
   2. The goods and other merchandise offered for sale on the website are counterfeit/not produced by the Complainant;
   3. The statement on the target website that reads "Official Genshin Impact Merch" is false. The Complainant has no relationship with this website whatsoever.  

• The Complainant refers to previous domain names decisions in this regard.
  
  

BAD FAITH REGISTRATION AND USE

The Complainant states that:

• Seniority of the Complainant's Trademarks as well as launch date of the Genshin Impact game predates the registration of the disputed domain name.
• Furthermore, the Complainant's Trademarks and the Genshin Impact game are both well-known and have received widespread recognition. Therefore, the Respondent must have been aware of such trademarks and their reputation. This clearly indicates bad faith registration of the disputed domain name by the Respondent.
• The disputed domain name website resolves to a third party website, which provides counterfeited merchandise and infringes Complainant’s copyrights to various Genshin Impact artwork.
• The Complainant contends the Respondent has attempted to attract Internet users thanks to the Complainant’s trademarks for its own commercial gain, which is evidence of bad faith.
• The Complainant refers to previous domain name decisions in this regard.

RESPONDENT:

The Respondent has not provided any response to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

RIGHTS

The disputed domain name and the Complainant’s trademarks are identical.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the “.shop“) must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration.

On the contrary, the use of the top-level domain <.shop> may further heighten the risk of confusion for internet users, leading them to believe that the disputed domain name or its associated website is an official merchandise shop operated or endorsed by the Complainant.

Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant´s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.

Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of Policy).

The use of the disputed domain name to redirect to a third-party website (https://genshinimpactmerch.shop/), which:
a) is unauthorized by the Complainant and infringes the Complainant’s trademark rights,
b) offers counterfeit goods and merchandise that are not produced by the Complainant,
c) falsely claims to provide "Official Genshin Impact Merch" when, in fact, the Complainant has no relationship with this website,
does not establish any rights to, or legitimate interest in, the disputed domain name.

BAD FAITH

The Panel finds it grounded that the Respondent registered and used the disputed domain name in bad faith.

The Complainant's trademarks are well-known and widely recognized, predating the registration of the disputed domain name. The term "GENSHIN IMPACT" possesses a high degree of distinctiveness, and the computer game released under this name has gained global fame and recognition. Given this, it is highly implausible that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademarks and their reputation. This strongly suggests that the domain name was registered by the Respondent in bad faith.

Furthermore, the unauthorized use of the disputed domain name, as detailed above (see "No Rights or Legitimate Interest"), clearly demonstrates that the Respondent has attempted to attract Internet users to a third-party website for commercial gain. The Complainant has shown that the Respondent, at least for a period of time, used the disputed domain name to promote and offer goods and services (i) likely with the intention of exploiting the reputation and goodwill of the Complainant's trademarks and business, and (ii) in a manner that was detrimental both to customers and to the Complainant's business.

Thus, the Panel has taken a view that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).