The Complainants are Linhope International Limited (the “First Complainant”), China, and Original Beauty Technology Company Limited (the “Second Complainant”), China, represented by Mono Law Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondents are Domains by Proxy, LLC, United States of America (“United States”), Blue Face, United States, Chen jiangqing, China, chenjianqing chen, Hong Kong, China, and Lyonn Smith, United States. 2. The Domain Name and Registrar
The disputed domain names The disputed domain names 1API GmbH. The two registrars above are jointly referred to as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On July 9 and 10, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on July 14, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint by July 19, 2020. On July 16, 2020, the Complainants requested an extension of the deadline for the submission of an amended Complaint. On the same sate, the Center extended the deadline until July 21, 2020. The Complainants filed an amended Complaint on July 20, 2020. On July 22, 2020, the Center sent an email communication to the Parties informing them that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment. The Center verified that the Complaint together with the amended 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 the Respondents of the Complaint, and the proceedings commenced on July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 17, 2020. On August 20, 2020, the Center received an unsolicited supplemental filing from the Complainants. The Center appointed Assen Alexiev as the sole panelist in this matter on August 25, 2020. The Panel finds that it was properly constituted. 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. On September 8, 2020, the Panel requested the Complainants to provide additional information about the implementation of the Order of the High Court in London, referred to in the Complainants’ supplemental submission of August 20, 2020. On September 15, 2020, the Complainants informed the Panel that the Respondents had taken no steps to transfer the disputed domain names to the Complainants in accordance with the Order of the High Court in London, and confirmed that they maintain their request for relief in the present proceeding. The Respondents did not file any comments on the Complainants’ submission dated September 15, 2020. 4. Factual Background The First Complainant is a company registered in Hong Kong, China. The Second Complainant has manufactured and marketed luxury womenswear under the brand HOUSE OF CB since 2014. The First Complainant is the registered owner of the United Kingdom trademark HOUSE OF CB with registration No.00003068906, registered as of January 2, 2015 for goods in International Classes 3, 9, 14, 18, and 25 (the “HOUSE OF CB trademark”). The First Complainant has granted an exclusive license to the Second Complainant to use the HOUSE OF CB trademark, which license was registered in the United Kingdom Intellectual Property Office under No. RC000094288. The Second Complainant maintains its official website at “www.houseofcb.com”. The Respondent Lyonn Smith is the registrant of the disputed domain name The Respondent chenjianqing chen is the registrant of the disputed domain names The Respondent Chen jiangqing is the registrant of the disputed domain name The Respondent Blue Face is the registrant of the disputed domain names The disputed domain names resolve to websites that offer luxury womenswear “designed for House of CB”. 5. Parties’ Contentions A. Complainants The Complainants claim that the disputed domain names According to the Complainants, the Respondents have no rights or legitimate interests in respect of the disputed domain names, as the Second Complainant commenced trading under the “HOUSE OF CB” name several years before any of the disputed domain names was registered. The Complainants further claim that the Respondents are not commonly known under the name “HOUSE OF CB”, “HOUSE OF CB LONDON”, or any other name incorporating the term “CB”. According to the Complainants, many images and descriptions of garments from the Second Complainant’s official website have been copied and displayed on the websites at the disputed domain names or on websites to which visitors of the websites at the disputed domain names are redirected. The Complainants claim that each of the disputed domain names was registered, and is being used in bad faith, for a fraudulent scheme to deceive members of the public to pay for counterfeit copies of the Second Complainant’s HOUSE OF CB garments or for garments that will never be delivered, to divert sales from the Complainants, and to take illegitimate advantage of the Complainants’ valuable goodwill and reputation. The Complainants submit that that have commenced legal proceedings in the High Court of Justice, Business and Property Courts of England & Wales in London on December 7, 2019 in Claim No.IL-2019-000141, claiming damages and injunctive relief for infringement of trademark, copyright and passing off against Mr. Jianqing Chen, who has not responded to nor engaged in any way with the proceedings, and the Complainants have applied for judgment in default. A temporary injunction Order was made on December 16, 2019 prohibiting Mr. Jianqing Chen from infringing the HOUSE OF CB trademark, and this injunction Order was continued on 14 January 14, 2020. Mr. Jianqing Chen has failed to comply with the terms of the injunction order. With their supplementary submission of August 20, 2020, the Complainants informed the Panel that on August 4, 2020, in the proceeding under the same Claim the High Court of Justice in London has ordered Mr. Jianqing Chen to transfer the disputed domain names The Complainants request the transfer of the disputed domain names to the Second Complainant. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issues – Consolidation of Respondents and disputes/proceedings and consolidation of Complainants The Complainants request the consolidation of the respondents in respect of the disputed domain names, maintaining that all of them are under common control. According to the Complainants, Jianqing Chen, Chen Jianqing, Chenjianqing Chen and Chen Jiangqing are different names of the same actual person under the name Jianqing Chen, who ultimately controls all of the disputed domain names. The Complainants note that the custom and practice in listing a person’s first name and surname differs from country to country and this is the reason why in some instances Mr. Jianqing Chen’s surname appears before his first name and vice versa and why there has been confusion in the order in which his names are recorded in the online registration forms for the disputed domain names. The Complainants point out that all of the disputed domain names include either the word “HOUSEOFCB” or “CB” and each of the disputed websites are in substantially the same format and indicate the same email addresses and contact details. According to the Complainant, each of the disputed websites have sought to replicate the business of the Complainants with the wholesale copying of the Second Complainant’s website, trading names and products. The Complainants note that the disputed domain name The Complainants further submit that Blue Face, the registrant of the disputed domain names The Center has discharged its duties to notify each of the entities listed as registrants of the disputed domain names. Neither of these entities has submitted a Response in this proceeding or denied the requests and statements made by the Complainant, including those related to the consolidation of the disputes in respect of all of the disputed domain names. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, any changes by the respondent relating to any of the above items following communications regarding the disputed domain names, or other arguments made by the complainant. The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. The evidence submitted by the Complainants shows that the websites at all of the disputed domain names are indeed similar in design and content and share the same or similar contact details between each other and/or with the websites associated to other domain names controlled by Mr. Jianqing Chen, or that some of the disputed domain names redirect to other websites under the control of Mr. Jianqing Chen or vice versa. The Panel also understands from the Order by the High Court of Justice in London, submitted by the Complainants, whereby Mr. Jianqing Chen was ordered by the Court to transfer the disputed domain names All the above satisfies the Panel that it is more likely than not that all of the disputed domain names are under common control. The second procedural issue here is the consolidation of multiple Complainants in a single Complaint. The Policy and the Rules do not directly regulate this issue. As discussed in section 4.11.1 of the WIPO Overview 3.0, in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. The Complainants have shown that the First Complainant is the owner of the HOUSE OF CB trademark, and has granted an exclusive license to the Second Complainant for it, and they have brought forward certain common grievances against the Respondents in the Complaint. Neither of the listed registrants of the disputed domain names has objected to the consolidation request of the Complainants or advanced any reasons why it may not be equitable to allow the consolidation of the disputes. In the Panel’s view, the consolidation would lead to greater procedural efficiency, and no reasons why the consolidation – if there are any – would not be fair and equitable to all parties have been brought forward. Therefore, the Panel decides to allow the consolidation of the Complainants and of the respondents and disputes in relation to all of the disputed domain names in the present proceeding. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondents have registered and are using the disputed domain names in bad faith. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].” The Respondents have however not submitted a Response and have not disputed the Complainants’ contentions and evidence in this proceeding. A. Identical or Confusingly Similar The Complainants have provided evidence that the First Complainant is the owner of the HOUSE OF CB trademark. They submit that the Second Complainant has been granted an exclusive license to use this trademark by the First Complainant. As discussed in section 1.4.1 of the WIPO Overview 3.0, an exclusive trademark licensee is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. In view of this, the Panel accepts that the Complainants have established their rights in the HOUSE OF CB trademark for the purposes of the present proceeding. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain names. As submitted by the Complainants, the disputed domain names In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain names are confusingly similar to the HOUSE OF CB trademark in which the Complainants have rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0 . The Complainants contend that the Respondents have no rights or legitimate interests in the disputed domain names, stating that the Second Complainant commenced trading under the “HOUSE OF CB” name several years before any of the disputed domain names was registered, and that the Respondents are not commonly known under the name “HOUSE OF CB”, “HOUSE OF CB LONDON”, or any other name incorporating the term “CB”. According to the Complainants, the Respondents are not carrying out a bona fide use of the disputed domain names, as they have copied many images and descriptions of garments from the Second Complainant’s official website and have displayed them without authorization from the Complainants on the websites at the disputed domain names. Thus, the Complainants have established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names. The Respondents have not submitted a Response and have not alleged that they have rights or legitimate interests in the disputed domain names and have not disputed the Complainants’ allegations in this proceeding. As summarized in section 2.8.1 of WIPO Overview 3.0 , UDRP panels acting under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, but only if the respondent is actually offering the complainant’s goods and only these goods, the respondent’s website is accurately and prominently disclosing the registrant’s relationship with the trademark holder, and the respondent is not trying to “corner the market” in domain names that reflect the complainant’s trademark. The evidence in the case file shows that these requirements have not been complied with in the present case. The Respondents have registered six disputed domain names that are all confusingly similar to the HOUSE OF CB trademark, and all of them resolve to websites that offer products bearing this trademark and display it without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. There is no evidence in the case file that the Respondents’ website offer original or legitimate products of the Complainants and the Respondents do not allege this. Moreover, the High Court of Justice in London has issued an order against Mr. Jianqing Chen, ordering him to transfer the disputed domain names In view of the above, the Panel is satisfied that the Respondents, being aware of the goodwill of the Complainant’s HOUSE OF CB trademark, have registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondents’ websites which offer products of unknown origin bearing the HOUSE OF CB without disclosure of the lack of relationship between the Parties and without authorization of this conduct by the Complainant. To the Panel, such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondents in the disputed domain names. Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The disputed domain names incorporate the HOUSE OF CB trademark or its dominant element “CB”, and this trademark was registered more than five years prior to the registration of the disputed domain names. The Respondents do not deny that the disputed domain names are linked to websites that offer the products of unknown origin bearing the HOUSE OF CB trademark without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. The Respondents also do not deny that their conduct has not been authorized by the Complainants. As discussed in section 6.1, it is more likely than not that all disputed domain names are under common control. Taking the above into account, the Panel concludes that the Respondents have registered the disputed domain names with knowledge of the Complainants and targeting the HOUSE OF CB trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations where the Complainant’s HOUSE OF CB products are offered for sale and then offer them products of unknown origin for commercial gain. In view of this, the Panel accepts that by registering and using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names, by creating a likelihood of confusion with the Complainant’s HOUSE OF CB trademark, which supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith. 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 names Assen Alexiev
Sole Panelist
Date: September 25, 2020
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