WIPO Domain Name Decision D2021-0358 for relxchina.com, relxcn.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shenzhen Relx Technology Co., Ltd v. WhoisGuard Protected, WhoisGuard, Inc. / Xinke Liu Case No. D2021-0358 1. The Parties

The Complainant is Shenzhen Relx Technology Co., Ltd, China, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Xinke Liu, Australia. 2. The Domain Names and Registrar

The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2021, 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 February 16, 2021 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 February 18, 2021.

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 February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on April 14, 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 is a company based in Shenzhen, China. Its primary operations include the research, development, manufacturing and distribution of its RELX brand of e-vapor products. The Complainant operates its website at the primary domain name

The Complainant is the owner of trade mark registrations for RELX in different countries, including Chinese Trade Mark Registration No. 28527765 for registered on December 7, 2018 in class 34, Australian Trade Mark Registration No. 1954762 for registered on September 12, 2018 in class 34 and Australian Trade Mark Registration No. 2036259 for registered on September 11, 2019 in class 9.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Xinke Liu, Australia.

The disputed domain names and were registered on November 14, 2019 and November 19, 2019, respectively. The disputed domain name resolves to an active webpage displaying the Complainant’s RELX trade mark and offering e-vapour products. The disputed domain name resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant

The Complainant contends that it is the owner of the RELX trade mark. It is standard practice to not take the extension into account when comparing the disputed domain names to the Complainant’s trade mark. The disputed domain names capture the RELX trade mark in its entirety and the additional geographical terms “china” or “cn” (the two letter country code for China) would not prevent a finding of confusing similarity under the first element. The Complainant is headquartered in China and adding these geographically descriptive terms only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant’s trade mark. The Respondent’s use of the disputed domain name to resolve to a website claiming to be the Complainant’s official website is further evidence that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Complainant further alleges that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trade marks in any manner. The Respondent is not commonly known by the disputed domain names, which evinces a lack of rights or legitimate interests. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trade mark. The Respondent was using a privacy service which past UDRP panels have found to equate to a lack of legitimate interest. The Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial or fair use of the disputed domain names. The Respondent is attempting to pass off as the Complainant on the website at the disputed domain name by describing itself as the official website of the RELX brand and displaying the Complainant’s RELX trade mark on the website header without the Complainant’s authorization. The Respondent is using metadata associated with the disputed domain name to increase the likelihood of misdirecting an Internet user searching for the Complainant to the disputed domain name. The Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page which demonstrates a lack of any attempt to make legitimate use of the disputed domain name and website. The registrations of the disputed domain names are significantly after the Complainant filed for registration of its RELX trade mark and its domain name.

The Complainant finally asserts that the Respondent has knowledge of and familiarity with the Complainant’s brand and business. The brand RELX in relation to e-vapor products is so closely associated with the Complainant that the Respondent’s use of this mark or any minor variation of it strongly implies bad faith. The presence of a disclaimer on the website of the disputed domain name makes it clear that the Respondent knew of the Complainant when registering and using the disputed domain name. The Respondent is attempting to pass off as the Complainant by displaying the Complainant’s RELX trade mark on the website at the disputed domain name and profit from such confusion by offering for sale RELX e-vapor products without Complainant’s authorization. The Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and the Respondent is using the fame of the Complainant’s trade mark to improperly increase traffic to the website listed at the disputed domain name for the Respondent’s own commercial gain. Such use constitutes a disruption of the Complainant’s business and qualifies as bad faith registration. The Respondent’s passive holding of the disputed domain name can constitute a factor in finding bad faith. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the RELX mark.

The Panel notes the disputed domain names wholly encompass the RELX mark. The positioning of the RELX mark at the front of the disputed domain names makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the similarity of the domain name from the registered trade mark under the first element of the Policy. The Panel considers that the addition of the geographical terms, “china” and “cn” (the two letter country code for China), are insufficient to preclude a finding of confusing similarity between the RELX mark and the disputed domain names. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests

In circumstances where the Complainant possesses exclusive rights to the RELX mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.

The Complainant has not granted the Respondent a license or authorization to use the Complainant’s RELX mark or register the disputed domain names. The Respondent has not provided evidence of any legitimate use of the disputed domain names or reasons to justify the choice of the term “RELX” in the disputed domain names. Further, there is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in the disputed domain names.

The Respondent is currently using the disputed domain name on a webpage bearing the RELX mark and offering the Complainant’s products. Previous UDRP panels have recognized that resellers or distributors using a domain name containing the complainant’s trade mark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. See section 2.8.1 of the WIPO Overview 3.0. In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-090, the panel outlined the following cumulative requirements to determine if a respondent is making a bona fide offering of goods and services:

(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 trade mark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trade mark.

In the current case, the Respondent’s conduct at least fails to meet the second and third requirements of the above test. In particular, the Respondent identified itself as the “go-to source of IQOS products” which are the competitive products of the Complainant in the resolved website. Although the Respondent included a disclaimer at the bottom of the resolved website that "We are reseller of these products. ‘RELX’ are registered trademarks of RELX. relxchina is not endorsed nor affiliated with RELX.", it had falsely described the resolved website as the official website when in fact it is only a reseller.

The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name as it currently resolves to an inactive webpage. Overall, none of these circumstances indicate a bona fide offering of goods or services or legitimate noncommercial or fair use of any of the disputed domain names within the meaning of paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith

The Complainant’s RELX mark had been registered well before the registration of the disputed domain names. Moreover, the term “RELX” is not merely a name. Search results using the key word “RELX” on the Baidu and Google search engines direct Internet users to the Complainant and its products, which indicates that a connection between the RELX mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s RELX mark when registering the disputed domain names or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874.

Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names incorporate the Complainant’s famous RELX mark plus the terms “china” and “cn” creating a presumption of bad faith.

The Panel notes that the disputed domain name resolves to a website displaying the Complainant’s RELX trade mark and offering the Complainant’s goods. While the resolved website includes a disclaimer indicating that it is only the reseller of the Complainant’s goods, the Respondent has falsely described the resolved website as the Complainant’s official website. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s RELX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This demonstrates bad faith use of the disputed domain name , as provided in paragraph 4(b)(iv) of the Policy.

In addition, the Panel finds that the inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considered the misleading content of the Respondent’s website accessed through the disputed domain name , as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0.

Taking into account the circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 names and be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: April 28, 2021

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