The Complainant is Linhope International Limited, Original Beauty Technology Company Limited, Hong Kong, China, represented by Mono Law Limited, United Kingdom.
The Respondent is Privacy Protect LLC, United States of America (“United States”) / heba, Xiamen Heba Brand Management Co., Ltd., China; Whoistrustee.com Limited, United Kingdom / Blue Face, United States; Domains By Proxy LLC, United States / Chen Jiangqing, JIANQING LTD., United Kingdom / Mr. Chen, United States. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names The disputed domain name (Hereinafter referred to as “the Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2020, the Registrar transmitted by email to the Center its verification response 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 Complainant on December 26, 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 December 30, 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 January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Center received an email communication from the Respondent on January 26, 2021. The Complainant filed a supplemental filing on February 5, 2021. The Center notified the commencement of Panel appointment process on February 11, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 3, 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 First Complaint is the registered owner of: (a) United Kingdom Registered Trademark No 3068906, HOUSE OF CB / houseofcb / house of cb, registered as a series mark in respect of a wide range of goods in International Classes 3 (cosmetics etc.), 14 (jewellery etc.), 18 (handbags etc.) and 25 (clothing, footwear and headgear etc.). The application was filed on August 16, 2014 and entered on the register on January 2, 2015; (b) Chinese registered trademarks Nos 14802543 and 35653958, HOUSE OF CB, for goods in International Classes 18 and 25. These trademarks were registered on August 14 and 21, 2018; and (c) European Union Registered Trade Mark (EUTM) No. 018232169, HOUSE OF CB, in respect of a similar, wide range of goods to the United Kingdom Trademark. The application was filed on April 28, 2020 and registered on August 25, 2020. The First Complainant also has pending trademark applications in the United States, Canada and Australia. These applications were filed in December 2019. The First Complainant has granted an exclusive licence of its trademark to the Second Complainant. According to the Complaint, the Second Complainant has traded as “House of CB” or “House of CB London” since 2014. Its sales of luxury women’s fashion have been worldwide through its website at “www.houseofcb.com”. It also has branded stores and concessions in the United Kingdom, the United States and Australia. In addition, the Second Complainant has operated Instagram and Twitter accounts at, respectively, @houseofcb and @HouseOfCB. The Instagram account has 2.9 million followers. The Twitter account has 108,400 followers. The Complaint also states that the Complainants’ garments are popular with celebrities including J.Lo, Beyoncé, Rihanna, Kim Khloe, and Kourtney Kardashian, Kendall and Kylie Jenner, Mariah Carey, Ariana Grande, Nicki Minaj, Little Mix, the supermodel Joan Smalls, and Gigi and Bella Hadid, who are frequently photographed in the Complainants’ garments. At least some images included in the Complaint provide support for that claim. Between November 2019 and March 2020, two of the Respondents, Blue Face and Chen jiangqing, registered the domain names In December 2019, the Complainants commenced proceedings against Chen Jianqing Chen (also known as Jianqing Chen) in the High Court of Justice in England, Claim No. IL-2019-000141. Injunctions were granted against use of the signs “House of CB” and “houseofcblondon” on an ex parte basis. Ultimately, this proceeding concluded in August 2020 with a judgment in default of appearance by the defendant. On July 8, 2020, those domain names and a number of others became the subject of a prior dispute under the Policy: Linhope International Limited, Original Beauty Technology Company Limited v. Domains by Proxy, LLC, Blue Face, Chen jiangqing, chenjianqing chen and Lyonn Smith,WIPO Case No. D2020-1775. The panel in that proceeding delivered his decision on September 25, 2020. That proceeding was not defended and resulted in orders transferring those domain names, and several others, to the Second Complainant. The Respondent(s) registered the disputed domain names on the following dates: (1) (2) (3) (4) (5) (6) The emailed Response provided by Mr Chen provides evidence that Jianqing Ltd is a company incorporated in the United Kingdom with a registered office in London and, further, that Jianqing Ltd has registered trademarks for HOUSEOFCB in: (a) Australia, Trademark No. 2055948, for goods in International Class 25 which was filed on December 6, 2019, and registered on July 14, 2020; (b) Canada, Trademark No. 2000203, for goods in International Classes 14 and 25 which was filed on December 9, 2019; (c) France, Trademark No. 4667862, for goods in International Class 25 which was filed on July 21, 2020; and (d) United States, Trademark No. 6196856 in International Class 25, which was filed on December 6, 2019, and registered on November 10, 2020. Jianqing Ltd. also has pending applications in Canada, Hong Kong, China, Japan and the United States. The application in Canada was filed on December 9, 2019 for a range of goods in International Classes 14 and 25. The application in Hong Kong, China, was filed on August 7, 2020 for goods in International Class 25. The application in Japan was filed on September 6, 2020 for a range of goods in International Class 25. The United States applications were filed in October 2020 for additional goods in International Class 25 and services in International Class 35. Prior to the Complaint being filed, the disputed domain names resolved to websites which offered luxury womenswear for sale. The photographs of many of the models and garments presented on these websites are the same as photographs appearing from time to time on the Complainants’ official website. The Complainants state this use of their materials is unauthorized. Over time, the Complainants have received emails from people that placed orders on the website at the disputed domain names with complaints about the services they have received or not received. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Consolidation of complaints against respondents The Complainants have requested consolidation of the complaints as the disputed domain names have been registered in the names of a number of different entities. Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case. In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11. First, the Panel notes that the Response from Mr. Chen is not expressly clear whether it relates to one of the disputed domain names only (presumably, Secondly, at least two of the Respondents – “Blue Face” and Jiangqing Chen / Jianqing Limited appear to be the same persons as at least two of the respondents in the previous decision, Linhope International Limited, Original Beauty Technology Company Limited v. Domains by Proxy, LLC, Blue Face, Chen jiangqing, chenjianqing chen and Lyonn Smith,WIPO Case No. D2020-1775. After very careful consideration, the panelist in that case ordered consolidation. The panel’s reasons included that all of the disputed domain names included either “houseofcb” or “cb”; all resolved to websites in substantially the same format; all indicated the same email addresses and contact details. Each of these matters is equally applicable to the websites of all of the disputed domain names in this case, even the disputed domain names registered in the name of heba, Xiamen Heba Brand Management Co., Ltd. which was not a party to the previous decision. It may also be added that, in addition to being in the same format, the websites to which the disputed domain names resolve all appear to use images which are the same images as have been used on the Complainants’ website. All also use the same terms and conditions. As already mentioned, the email and contact details, as well as the terms and conditions, are the same and also the same or almost the same as content of the domain names in dispute in the previous decision. Thirdly, “Blue Face” is plainly a pseudonym and, as in the earlier decision, there are very good reasons for doubting it is the name of a real person. Apart from anything else, the address provided to the Registrar and recorded in the WhoIs is false, being the address of a Starbucks in the United States. The Panel also notes that the “privacy service” name published in the WhoIs for the disputed domain names allegedly held by “Blue Face” before the Complaint was filed included the name “Mr Chen”. Fourthly, the Complainants credibly argue that the Respondent heba, Xiamen Heba Brand Management Co. Ltd. is a brand management company holding the disputed domain name on behalf of some unidentified client. In these circumstances, the Panel considers it appropriate to order consolidation of all the Complaints. If the actual registrant of each disputed domain name is not the same person, it appears more than reasonably clear that the disputed domain names are all being exercised under common control or for a common purpose. It also does not appear that there is any prejudice likely to be suffered by the Respondents by allowing joinder. Notice of the Complaint with all the annexures has been served on each Respondent at the co-ordinates confirmed as correct by the Registrars. None have come forward disputing consolidation or pointing to any prejudice. Only a Response has been submitted by Mr Chen. Joinder also avoids a multiplicity of proceedings, and the Panel finds that a single proceeding would be procedurally beneficial for all the Parties. Accordingly, it appears to the Panel to be fair and equitable to all parties, and an efficient use of resources, to consolidate all of the disputed domain names in the one Complaint. For ease of reference, the Panel will refer just to the “Respondent” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names. B. Identical or Confusingly Similar The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights. There are two parts to this inquiry: the Complainants must demonstrate rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainants have proven ownership of the registered trademarks for HOUSE OF CB (or in series, houseofcb) identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. The disputed domain names other than Disregarding the “.com” gTLD, each of these disputed domain names consists of the Complainant’s registered trademark and either a geographical term appended as a suffix (“Canada”, “Australia”, “France” or “US”) or the definite article “the” appended as a prefix. As this requirement under the Policy is essentially a standing requirement, the addition of terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. The disputed domain name The disputed domain name In the prior dispute, Linhope International Limited, Original Beauty Technology Company Limited v. Domains by Proxy, LLC, Blue Face, Chen jiangqing, chenjianqing chen and Lyonn Smith,WIPO Case No. D2020-1775, the prior panel found the domain names The content of those websites was very similar to the content made available on the websites to which the disputed domain names resolved in that it prominently displayed images of the Complainants’ garments which had been copied from the Complainants’ website. The Panel respectfully agrees with the prior panel’s analysis. As noted in WIPO Overview 3.0, section 1.15, while the content of a website is usually disregarded for the purposes of this comparison, it may be taken into account “to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” Accordingly, the Panel finds that the Complainants have established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. C. Rights or Legitimate Interests The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. In this case, there is no dispute that the Respondent is not authorised by the Complainants to use the disputed domain name. Nor are any of the disputed domain names derived from the Respondent’s name. As the Complainants’ rights predate the registration of the disputed domain names, noting the above, that would ordinarily be sufficient to satisfy the requirements of the prima facie case. The Respondent, however, has advanced the five trademarks for HOUSE OF CB registered in the name of Jianqing Ltd in Australia, Canada, France, Japan and the United States to establish the Respondent’s rights in the disputed domain names. The Panel is very reluctant to go behind the Respondent’s registered trademarks. For example, under Australian law, use of a trademark for the goods or services in respect of which it is registered is a complete defence to an action for infringement of another person’s trademark. See Trade Marks Act 1995 (Cth) section 122(1)(e). The WIPO Overview 3.0, however, records at section 2.12.2: “2.12.2 The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). Absent evidence of such circumstances indicating pretext however, panels have been reluctant to reject a respondent trademark registration out of hand.” A notable feature in the present case is that the Respondent started filing the trademark applications and registering the disputed domain names early in December 2019. That was five years after the Complainants began operating under their trademark. It is also within days before the Complainants bringing the court action against Jianqing Ltd in the High Court of Justice in England in December 2019. Shortly before, in November 2019, the Complainants had approached the registrar of the domain name The court action resulted in injunctions being made against Chen Jiangqing Chen (also known as Jianqing Chen) restraining the use of “House of CB” in connection with the advertising or sale of clothing and procuring or assisting anyone else to do so. (The court also ordered the defendant to transfer the domain names to the Second Complainant, but that did not happen and those domain names became part of the prior disputeWIPO Case No. D2020-1175.) In addition, it is noteworthy that the website to which the disputed domain names resolved is not directed only to a particular jurisdiction. For example, the disputed domain name The Complaint also includes evidence from a number of persons who appear to have bought, or attempted to buy, products through the Respondent’s website. These people have been unsatisfied with the service, including failure to receive acknowledgements of orders, and have complained to the Complainants seeking redress. Further, the images used on the Respondent’s websites have apparently been copied from the Complainants’ website without permission. As the Complainants contend, such conduct constitutes copyright infringement. In these circumstances, it is very difficult to consider the Respondent is offering goods or services in good faith. The involvement of Jianqing Ltd appears to be in violation of the injunction granted against it by the High Court of Justice. Given the Complainants’ long period of use before the Respondent applied to register either the trademarks or the disputed domain names, it appears highly likely that the trademark registrations were made in bad faith to circumvent the Complainants’ rights. For example, screenshots stored on the Wayback Machine show that the Complainants had stores or concessions in both the United States and Australia by February 2017, with those stores predating the Respondent’s trademarks.1 Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also. D. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. In this connection, it is noticeable that the trademark HOUSE OF CB is not descriptive or laudatory of the products in question, but has significance only as a result of its adoption and use by the Complainants. As already noted, the trademark is not derived from or connected with any of the names used by the Respondent, apart from the Respondent’s registration of the term as a trademark many years after the Complainant began using it. As the Panel is not able to accept the Respondents’ trademark registrations as made in good faith, for the reasons outlined in section 5C above, therefore, the Panel finds the disputed domain names have been registered in bad faith. They are also being used in bad faith contrary to the Policy to sell, or offer for sale, goods in competition with the Complainant using the Complainant’s own trademark in a way likely to divert customers and potential customers from the Complainant to the Respondent. Accordingly, the Complainants have established all three requirements under the Policy. 6. 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: Warwick A. Rothnie 1 For example, in Australia see Malibu Boats West, Inc v Catanese [2000] FCA 1141 (Finkelstein J).
Sole Panelist
Date: March 17, 2021
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