The Complainants are Linhope International Limited and Original Beauty Technology Company Limited, Hong Kong, China, represented by Mono Law Limited, United Kingdom.
The Respondents are c/o WHOIStrustee.com Limited / Mark Lewis, United Kingdom; Blue Face, United States of America (“United States”); Mr Chen / Chen Jianqing aka Jianqing Chen, Chen Jianqing Chen, Chenjianqing Chen and Chen Jiangqing, Jianqing Limited, United Kingdom. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. On February 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 12, 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 17 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 19, 2021. The Complainant submitted supplemental filings to the Center on March 2, 2021 and April 1, 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 Respondents of the Complaint, and the proceedings commenced on February 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2021. The Center received email communications from the Respondents on February 25, March 5, March 24 and March 26, 2021. The Center appointed John Swinson as the sole panelist in this matter on March 29, 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 Complainants in these proceedings are Linhope International Limited (the “First Complainant”) and Original Beauty Technology Company Limited (the “Second Complainant”), both companies are incorporated in Hong Kong, China. The First Complainant owns trade marks in various jurisdictions in connection with the House of CB brand, including United Kingdom registered trade mark number UK00003068906 for the series ‘HOUSE OF CB’, ‘houseofcb’ and ‘house of cb’, registered on January 2, 2015 (the “Trade Mark”). According to the Complaint, the First Complainant has granted an exclusive licence to the Second Complainant to use the Trade Mark. According to the Complaint, the Second Complainant has traded under the House of CB brand since 2014 worldwide via its website at “www.houseofcb.com” as well as branded stores and concessions within stores in the United Kingdom, United States, and Australia. The Second Complainant sells a large range of clothing and accessories. The Respondents in these proceedings are Mark Lewis, an individual of the United Kingdom (the “First Respondent”), Blue Face, an entity located in the United States (the “Second Respondent”), Chen Jianqing, an individual of the United Kingdom (the “Third Respondent”) and Jianqing Limited, a company incorporated in the United Kingdom (the “Fourth Respondent”) (collectively, the “Respondents”). The Fourth Respondent owns a number of trade marks for HOUSEOFCB, the earliest of which is Australian registered trade mark number 2055948, which was filed on December 6, 2019 and registered on July 14, 2020. The First Complainant has applied to remove this mark from the Australian trade mark register, and the Fourth Respondent has opposed the non-use action. Those proceedings are ongoing. The First Disputed Domain Name was registered on December 7, 2019. The Second Disputed Domain Name was registered on September 9, 2020. The Disputed Domain Names resolve to websites offering clothing and accessories for sale. 5. Parties’ Contentions A. Complainant The Complainants make the following submissions. Proper Respondents The Third Respondent is the party who ultimately owns and controls the Disputed Domain Names. The First Disputed Domain Name is registered to the First Respondent. The website to which the First Disputed Domain Name resolves has similar formatting and terms and conditions to various websites owned and operated by the Third Respondent at the domain names The Second Disputed Domain Name is registered to the Second Respondent. The Second Respondent is not a real person or entity. The address provided by the Second Respondent when registering the Second Disputed Domain Name is the address of a Starbucks branch in the United States. The Second Respondent is the registrant of two other domain names, The Disputed Domain Names and the other domain names owned by the Third Respondent (listed above) all incorporate either “houseofcb” or “cb” and resolve to websites in substantially the same format which seek to replicate the business of the Complainants by copying the Complainants’ website, trading names and products. The Fourth Respondent is a company wholly owned and operated by the Third Respondent and has been used by the Third Respondent to infringe the Complainants’ intellectual property rights and pass itself off as the Complainants. The Fourth Respondent has applied for trade marks in the United States, Canada and Australia for HOUSEOFCB despite the fact that the Second Complainant has been trading in these jurisdictions since 2014. Identical or Confusingly Similar The First Complainant has granted the Second Complainant an exclusive licence to use the Trade Mark. The Second Complainant has traded under name “House of CB” since 2014 and sells a large range of clothing and accessories via its website at “www.houseofcb.com” and stores in the United Kingdom, United States and Australia. Photographs of celebrities wearing the Second Complainant’s products are frequently publicised. The Second Complainant also promotes its business via its social media pages on Instagram and Twitter, which collectively have more than 3 million followers. The Disputed Domain Names are confusingly similar to the Trade Mark as they incorporate the Trade Mark in its entirety. Rights or Legitimate Interests The Respondents have no rights or legitimate interests in the Disputed Domain Names. The Disputed Domain Names were registered in December 2019 and September 2020, 5 years after the Second Complainant commenced trading under the name “House of CB” and the registration of the Trade Mark. The Complainants have not licensed the Respondents to use the Trade Mark. Images of products from the Second Complainants’ website at “www.houseofcb.com” have been copied and displayed on the websites at the Disputed Domain Names. This is copyright infringement. The High Court of England issued an order prohibiting the Fourth Respondent from using the Trade Mark or any similar sign and ordering the Fourth Respondent to transfer the domain names The panel in the First Linhope Case concluded that various domain names controlled by the Third Respondent were confusingly similar to the Trade Mark and that the Third Respondent did not have any rights or legitimate interests in those domain names. The Respondents have used the Trade Mark and images from the Second Complainants’ website as part of a fraudulent scheme to induce members of the public to pay for counterfeit copies of the Second Complainants’ products or products which were never delivered. Registered or Used in Bad Faith The Disputed Domain Names were registered and have been used for the purpose of a fraudulent scheme to deceive members of the public, divert sales from the Second Complainant and take illegitimate advantage of the Complainants’ valuable goodwill and reputation. B. Respondent The Respondents make the following submissions. The Fourth Respondent owns trade mark registrations for HOUSEOFCB in various countries. The Fourth Respondent and the Disputed Domain Names are legally registered. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which Complainants have rights; and The Complaint relates to two domain names. 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. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and given a fair opportunity to present their case. Panels in previous UDRP cases 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 section 4.11, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel notes that it is not clear whether the Response relates to one or both of the Disputed Domain Names. In the circumstances, the Panel will consider the Response in relation to both Disputed Domain Names. The Second Respondent, who is the registrant of the Second Disputed Domain Name, and the Third Respondent have both been respondents in two previous UDRP decisions (see the First Linhope Case and Linhope International Limited, Original Beauty Technology Company Limited v. Privacy Protect LLC / heba, Xiamen Heba Brand Management Co., Ltd.; Whoistrustee.com Limited / Blue Face; Domains By Proxy LLC / Chen Jiangqing, JIANQING LTD. / Mr. Chen,WIPO Case No. D2020-3481 (the “Second Linhope Case”)). The panels in both of those cases ordered consolidation based on a number of factors, including that the domain names all contained either ‘houseofcb’ or ‘cb’ and resolved to websites using substantially the same format. These factors are present in the current case. In addition, the panel in the Second Linhope Case noted that the websites at the disputed domain names in that case used the same terms and conditions and appeared to use images from the Second Complainant’s website. The panel in that case also found that the name “Blue Face” is plainly a pseudonym, citing a false address which Blue Face (the Second Respondent in the current case) provided to the Registrar, being the address of a Starbucks in the United States. These factors are also present in the current case. The First Respondent in the present case, who was not a respondent in either of the previous cases, used an address to register the First Disputed Domain Name which is the Third Respondent’s address for service and the registered office of the Fourth Respondent based on evidence provided by the Complainants. The Complainants contacted the individual who resided at this address and the individual advised that they did not know of the Third Respondent. Based on the circumstances outlined above, the Panel considers it appropriate to allow the Complaint to be consolidated in respect of the two Disputed Domain Names. If the actual registrant of each Disputed Domain Name is not the same individual or entity, the Panel is satisfied that the Disputed Domain Names are under common control, being used for a common purpose. This consolidation is unlikely to prejudice the Respondents. Notice of the Complaint was provided to each of the Respondents. The Response submitted did not dispute the Complainant’s request for consolidation. Accordingly, in the Panel’s view, it is fair and equitable to all parties and an efficient use of resources to consolidate the Complaint in respect of the two Disputed Domain Names. A.2 Supplemental Filings The Complainants submitted supplemental filings on March 2, 2021 and April 1, 2021 (the “Supplemental Filings”). Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged. A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6, WIPO Overview 3.0). The first supplemental filing was a letter from the Complainants’ legal representatives. According to the letter, the Complainants’ legal representatives sent a letter to the address used by the First Respondent to register the First Disputed Domain Name. The partner of the registered proprietor of the residence at that address responded via email stating that they had never heard of the First Respondent, Third Respondent or Joyce Symons, the individual who responded to the Center on behalf of the Respondents. The second supplemental filing was a letter from the Complainants’ legal representatives stating that they had received the decision from the panel in the Second Linhope Case. The Second, Third and Fourth Respondents were respondents in that case and the disputed domain names in that case all incorporated the Trade Mark or the term “cb”. The information contained in the Supplemental Filings was not available to the Complainants at the time the Complaint was submitted. The Panel admits the Supplemental Filings on this basis but notes that the matters raised do not affect the outcome of this case. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7, WIPO Overview 3.0). The Disputed Domain Names incorporate the entirety of the Trade Mark. The Second Disputed Domain Name also incorporates the word “discounts”. This additional dictionary term, which is related to the Second Complainant’s business as a fashion retailer, does not prevent a finding of confusing similarity. The Trade Mark is recognisable in the Disputed Domain Names. The Disputed Domain Names are identical or confusingly similar to the Trade Mark. The Complainants succeed on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants are required to make out a prima facie case showing that the Respondents lack rights or legitimate interests. The Complainants contend that they have not authorised the Respondents to use the Trade Mark, including in the Disputed Domain Names. This is not disputed by the Respondents. The Disputed Domain Names are not derived from the names of the Respondents. The Complainants’ rights in the Trade Mark predate the registration of the Disputed Domain Names. These factors would ordinarily be sufficient to establish a prima facie case. The Respondents have provided evidence of a number of trade mark registrations for HOUSE OF CB, owned by the Fourth Respondent, to establish the Respondents’ rights in the Disputed Domain Names. The Panel is reluctant to go behind the Respondents’ registered trademarks. However, section 2.12.2 of the WIPO Overview 3.0 states as follows: “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.” The First Disputed Domain Name was registered on December 7, 2019 and the Fourth Respondent began filing trade mark applications at or about this time. This is within days of the Complainants bringing the action in the High Court of England which resulted in an order prohibiting the Fourth Respondent from using the Trade Mark or any similar sign and requiring the Fourth Respondent to transfer the domain names In addition, according to the panel in the Second Linhope Case, the Complainants approached the registrar of the domain name At the time the Disputed Domain Names were registered, the Second Complainant had been operating under the Trade Mark for more than five years. Further, images used on the websites at the Disputed Domain Names appear to have been copied from the Second Complainant’s website at “www.houseofcb.com”. As the Complainants contend, this constitutes copyright infringement. In these circumstances, the Panel does not consider that the Respondents are making a bona fide offering of goods or services. The Second Complainant’s use of the Trade Mark for a long period prior to the Respondents applying to register the trade marks and the Disputed Domain Names indicates that the Fourth Respondent’s trade mark registrations were likely made in bad faith to circumvent the application of the UDRP or otherwise prevent the Complainants’ exercise of their rights. This is also supported by the High Court decision referred to by the Complainants. Accordingly, the Panel considers that the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondents registered and subsequently used the Disputed Domain Names in bad faith. Registration in bad faith At the time the Disputed Domain Names were registered, the Second Complainant had been operating under the Trade Mark for more than five years. The name “House of CB” is not descriptive of the products offered at the Disputed Domain Names and is not derived from any of the Respondents’ names. As outlined above, the Panel does not accept that the Fourth Respondent’s trade mark registrations for HOUSE OF CB were made in good faith for the purposes of the Policy. The Respondents also have a pattern of registering domain names to target the Trade Mark (see the First Linhope Case and Second Linhope Case). As a result, the Panel considers that the Respondents were likely aware of the Trade Mark at the time the Disputed Domain Names were registered. The Respondents have not provided any explanation as to how they came with the name “HOUSE OF CB”, and why they selected the Disputed Domain Names. The Panel concludes that the Disputed Domain Names were likely registered to target the Complainants and to take advantage of the reputation that the Complainants had developed in the Trade Mark. Use in bad faith The Respondents have used the Disputed Domain Names to offer (or purport to offer) products for sale which directly compete with those offered by the Second Complainant. The Complainants submit that these products are either counterfeit, or are not actually sold at all. The Respondents do not appear to dispute this, and does not allege that it is a reseller of the Second Complainant’s products. The websites at the Disputed Domain Names also feature images which appear to have been copied from the Second Complainant’s website at “www.houseofcb.com”. This indicates that the Respondents have used the Disputed Domain Names to take unfair advantage of the Complainants and/or the Trade Mark, which amounts to bad faith use under the Policy. In particular, the Panel finds that the Respondents are intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or a product or service on that website. Therefore, the Panel finds that the Disputed Domain Names have been used in bad faith. In light of the above, the Complainants succeed on the third element 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, John Swinson
(ii) Respondents have 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. A. Procedural matters A.1 Consolidation of a complaint against respondents
Sole PanelistJes
Date: April 12, 2021
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