The Complainant is Xypex Chemical Corporation, Canada, represented by DLA Piper (Canada) LLP, Canada.
The Respondent is Zou Xue Ming, 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 November 27, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. Due to an administrative oversight on the part of the Center, the Respondent was granted additional time until February 12, 2021 to indicate whether he wished to participate in the proceeding. The Respondent did not submit any response. Accordingly, the Center proceeded to the Panel appointment process. The Center appointed Francine Tan as the sole panelist in this matter on February 16, 2021. 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 Complainant states it is well known around the world in relation to concrete and cement waterproofing materials. The Complainant has been advertising and selling proprietary crystalline waterproofing products (the “XYPEX Products”) under the XYPEX trade mark for more than 50 years. On average, the Complainant has spent approximately USD 2.6 million a year on advertising its XYPEX Products over the past 10 years. The XYPEX Products are sold and supported by a worldwide network of distributors and licensees operating in more than 90 countries. The Complainant owns numerous trademark registrations for XYPEX worldwide, including in China. Its trademark registrations include the following: (i) Chinese Trade Mark No. 308768, registered on February 20, 1988; (ii) Canadian Trade Mark No. 164807, registered on August 22, 1969; and (iii) United States of America Trade Mark No. 1,191,928, registered on March 16, 1982. The disputed domain name was registered on June 16, 2020 and it used to resolve to an unauthorized site displaying pornographic material. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s XYPEX trade mark as the trade mark is incorporated entirely into the disputed domain name with the addition of a prefix “sz”. The prefix “sz” is a common abbreviation for the city of Shenzhen, China. It is commonplace to add the prefix “sz” to a domain name to indicate that it relates to the city of Shenzhen. The addition of a geographical term does not interfere with a finding that a domain name is confusingly similar to a trade mark. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has been advertising and selling XYPEX Products under the XYPEX trade mark for more than 50 years, the XYPEX Products are sold through a worldwide network of distributors and licensees operating in more than 90 countries. The XYPEX trade mark is famous in Canada and many countries worldwide. The Complainant registered its XYPEX trade mark in Canada, the United States, China and other countries long before the disputed domain name was registered. The XYPEX trade mark is not part of the Respondent’s name nor is the Respondent connected to, endorsed by, or related to the Complainant. The disputed domain name resolves to an unauthorized pornographic website. The “Xypex” term is not a generic term or a dictionary word and the Respondent is not commonly known as “Xypex”. The Respondent is not making a legitimate non-commercial use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name almost 50 years after the Complainant started providing products associated with the XYPEX mark. The XYPEX mark was already a registered trade mark in China, Canada and the United States of America and more than 90 other countries around the world at the time the disputed domain name was registered. The Respondent is attempting to derive economic benefit from the disputed domain name which is being used to host a pornographic website. The Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s XYPEX mark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s sites, business or services. The Respondent registered the Domain Name to disrupt the Complainant’s business and redirect its potential customers to the Respondent’s website which demonstrates bad faith use and registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established it has rights in the XYPEX trade mark. The trade mark is reproduced in its entirety in the disputed domain name. The Panel agrees that the addition of the prefix “sz” to the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s XYPEX trade mark, which is recognizable within the disputed domain name. The Complainant has provided ample evidence showing that “sz” is a common abbreviation for the city of Shenzhen, China. It is well established that the addition of a geographical term in a domain name does not prevent a finding of confusing similarity to a trade mark. The generic Top-Level Domain “.com” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark. The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trademark registrations and many years of use of the XYPEX trade mark long predate the registration of the disputed domain name. The Complainant did not license or authorize the Respondent to use the XYPEX mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “Xypex”. The use of the disputed domain name which incorporates the Complainant’s XYPEX trade mark in relation pornography does not constitute a bona fide offering of goods or services. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Complainant’s XYPEX trade mark is a unique and distinctive word as well as a well-established mark. The Respondent could not by pure coincidence and without prior knowledge of the Complainant and its mark have selected the disputed domain name without the Complainant and/or its XYPEX mark in mind. The Panel finds that the Respondent registered the disputed domain name with a view to attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s registered XYPEX trade mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website. A respondent’s use of a domain name comprising a complainant’s well-known trade mark in relation to pornography has been considered by prior UDRP panels to constitute bad faith. The inference of opportunistic bad faith on the Respondent’s part has not been rebutted by the Respondent. The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 Francine Tan
Sole Panelist
Date: February 23, 2021
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