The Complainant is Ball Chain Manufacturing Co., Inc., United States of America (“United States”) (the “First Complainant”), Guangzhou Powecom Labor Insurance Supplies Co., Ltd., d.b.a. Guangzhou Baoweikang Labor Insurance Supplies Co., Ltd., d.b.a. Guangzhou Safety Goods Manufacturing Co., Ltd., China (the “Second Complainant”), represented by Venable, LLP, United States. The First and Second Complainant are referred to collectively throughout this decision as the “Complainant”.
The Respondent is Wen Xue, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 4, 2020. 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020. The Center appointed Jane Seager as the sole panelist in this matter on September 15, 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. 4. Factual Background The Complaint was filed by two Complainants – Guangzhou Powecom Labor Insurance Supplies Co., Ltd., d.b.a. Guangzhou Baoweikang Labor Insurance Supplies Co., Ltd., d.b.a. Guangzhou Safety Goods Manufacturing Co., Ltd., a Chinese limited company, together with Ball Chain Manufacturing Co., Inc., a United States corporation. The Second Complainant, is a manufacturer and exporter of respirator masks. The Second Complainant’s “KN95” respirator masks are designed to protect the wearer against non-toxic solids, particulates, powder, dust, and saliva, and have been used in the context of the current coronavirus disease 2019 (“COVID-19”) pandemic. For use in connection with its respirator masks and other products, the Second Complainant has registered the following trademark: Chinese Trademark Registration No. 8221062, POWECOM (and design), registered on April 28, 2011. The Second Complainant has also filed an application to register POWECOM (and design) as a trademark in the United States (Application No. 88894521, filed on April 30, 2020). The First Complainant is an authorized distributor in the United States of the Second Complainant’s KN95 respirator masks. The disputed domain name was registered on May 15, 2020. The disputed domain name resolves to a website (the “Respondent’s website”) titled “POWECOM SUPPLY”. The Respondent’s website purports to sell various POWECOM-branded products, as well as a range of third-party products, many of which are offered at substantially discounted prices. The footer of the Respondent’s website reads “© POWECOM SUPPLY”. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the POWECOM trademark. The Complainant submits that the disputed domain name is confusingly similar to its POWECOM trademark in that it incorporates the entire POWECOM trademark, with the addition of the term “supply” under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that the addition of the term “supply” creates confusion with the Complainant’s trademark, as consumers need a supply of POWECOM products. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has not authorized the Respondent to use its POWECOM trademark in the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. Rather, the Complainant argues that the disputed domain name was registered to facilitate the sale of seemingly identical but unauthorized infringing goods to those offered by the Complainant. The Complainant asserts that the disputed domain name was registered for the dominant purpose of commercial gain stemming from the Complainant’s reputation and goodwill. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent has made a number of representations on its website that are designed to give the impression that the Respondent’s website is operated or authorized by the Second Complainant, when in reality, the Second Complainant has not authorized the Respondent to distribute, market, or sell any of its KN95 respirator masks. The Complainant asserts that none of the statements on the Respondent’s website were approved or authorized by the Complainant, nor do they reflect any legitimate partnership between the Respondent and the Complainant. The Complainant submits that the goods offered via the Respondent’s website are counterfeit, and notes that the masks offered for sale via the Respondent’s website are offered at discounted prices. The Complainant submits that by registering and using the disputed domain name, the Respondent has attempted to create a likelihood of confusion with the POWECOM trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, for commercial gain, in bad faith. The Complainant submits that the Respondent’s actions in the context of the current COVID-19 pandemic, when Personal Protective Equipment (“PPE”) is in high demand, is further evidence of bad faith on the part of the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Matter: Consolidation of the Complainant The Complaint has been filed by two Complainants. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 states: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) 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 (ii) it would be equitable and procedurally efficient to permit the consolidation.” As the owner of the POWECOM trademark, the Panel considers the Second Complainant to have standing to file the present UDRP Complaint. At the same time, as discussed in further detail below, by purporting to offer its products to consumers in the United States, the Panel considers that the Respondent has engaged in conduct that has sought to misleadingly divert customers away from the First Complainant, an authorized United States distributor of the Second Complainant. The Respondent has engaged in common conduct that has affected the Complainants in a similar fashion. The Panel is therefore of the view that it would be equitable to permit the consolidation of the Complainants. 6.2. Procedural Matter: Identity of the Respondent Paragraph 1 of the Rules defines the “Respondent” as the “holder of a domain-name registration against which a complaint is initiated”. The Registrar has confirmed the registrant of the disputed domain name to be Wen Xue. The Panel notes that the Respondent’s website makes reference to “Powecom Supply”, and that the Complainant has identified the Respondent as such. The Panel is of the view that references to “Powecom Supply” are merely an attempt on the part of the Respondent to create an impression of association with the Complainant, and do not necessarily reflect the identity of the registrant of the disputed domain name. In the circumstances, the Panel considers it appropriate to proceed to issue its decision identifying the Respondent as Wen Xue, as listed in the WhoIs and as confirmed by the Registrar. 6.3. Substantive Matters In order to prevail in its Complaint, the Complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Second Complainant has established rights in the POWECOM (and design) trademark by virtue of its registration of the same in China, the registration details of which are provided in the factual background section above. With regard to the Second Complainant’s trademark application for the same at the United States Patent and Trademark Office, the Panel notes that a pending trademark application would not by itself establish trademark rights within the meaning of paragraph 4(a)(i) of the UDRP; see WIPO Overview 3.0, section 1.1.4. The disputed domain name comprises the textual elements of the Second Complainant’s trademark, followed by the descriptive term “supply” under the gTLD “.com”. Prior UDRP panels have held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview 3.0, section 1.8. The Panel finds that the addition of the term “supply” does not prevent a finding of confusing similarity with the Second Complainant’s trademark, the textual elements of which are readily recognizable as the leading element of the disputed domain name. The gTLD “.com” may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1. The Panel finds the disputed domain name to be confusingly similar to the Second Complainant’s POWECOM trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As mentioned above, the disputed domain name resolves to a website that purports to offer the Second Complainant’s KN95 respirator masks for sale. Prior UDRP panels have recognized that resellers using a domain name containing a complainant’s trademark to undertake sales may be making a bona fide offering of goods or services and thus have a legitimate interests in such a domain name; see WIPO Overview 3.0, section 2.8.1. The following cumulative requirements, as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data criteria”), assist in determining whether a reseller is undertaking a bona fide use of a disputed domain name: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The Panel notes the Complainant’s assertion that the goods offered for sale via the Respondent’s website are counterfeit. Even if the goods are genuine, the Panel considers that the Respondent’s website fails to accurately and prominently disclose the nature of its relationship with the Second Complainant. In this regard, the Panel finds that the Respondent’s website includes a number of statements designed to mislead Internet users into believing that the Respondent’s website is either operated or authorized by the Second Complainant, including, e.g., “ABOUT POWECOM Guangzhou Powecom Labor Insurance Supplies Co., Ltd is FDA authorized manufacturer for KN95 face masks”, when in reality there is no relationship between the Parties. The Respondent’s website also purports to offer a range of third-party products, which compete with those offered by the Complainant. In light of the above, the Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent’s name, Wen Xue, as listed in the WhoIs, bears no resemblance to the disputed domain name. The Panel is of the view that the Respondent has not made any use of the disputed domain name so as to confer any reputation on the Respondent in the name “Powecom Supply”, independent from the Second Complainant’s trademark. There is no evidence of the Respondent having registered any trademarks for “powecom” or “powecomsupply” as reflected in the disputed domain name. The Panel therefore finds that the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. The Respondent’s use of the disputed domain name is clearly intended to be commercial in nature, and does not constitute a legitimate or noncommercial fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not come forward with any evidence to rebut the Complainant’s case against it. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is clear, from the contents of the Respondent’s website, as described above, that the Respondent registered the disputed domain name with the Second Complainant’s trademark in mind, with the view to creating a website that sought to create a misleading impression of association with the Complainant, for commercial gain. The Panel finds that the disputed domain name was registered in bad faith. The Respondent’s website includes a number of representations that give the impression that the Respondent’s website was either operated or authorized by the Second Complainant. The Panel finds that by using the disputed domain name in such a manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Second Complainant’s POWECOM trademark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and the goods offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has established the requirements of paragraph 4(a)(iii) of the Policy. 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 Jane Seager
Sole Panelist
Date: September 29, 2020
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