The Complainant is Susan Lordi, United States of America (“US”), represented by Hovey Williams LLP, US.
The Respondent is 林洪国 (Lin Hong Guo), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names On May 24, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 26, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceeding commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. The Center received the Respondent’s communication by email on May 19, 2021. On July 11, 2021, the Center informed the Parties that it would proceed to panel appointment. On July 20, 2021, the Complainant sent a request to the Center for the additional domain name The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 22, 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. On August 23, 2021, following a request from the Complainant, the Panel requested the Center to issue a request for registrar verification and a panel order in respect of the disputed domain name On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name On September 8, 2021, the Center issued Administrative Panel Procedural Order No. 1, requesting the Respondent to provide comments, if any, on the Complainant’s request to add the domain name On September 9, 2021, the Respondent sent two identical emails to the Center in English, stating: “Hello, do you need me to help you?” 4. Factual Background A. Complainant The Complainant is an individual resident in the US and renowned as the designer, manufacturer, and seller since 2000 of figurines (including nativity figurines) and home décor under the WILLOW TREE trade mark (the “Trade Mark”). The Complainant is the owner of registrations for the Trade Mark in jurisdictions worldwide, including US registration No. 2,687,795, with a registration date of February 18, 2003. B. Respondent The Respondent is apparently an individual resident in China. C. The Disputed Domain Names The disputed domain names were registered on March 9, 2021, March 25, 2021, and April 16, 2021, respectively. D. Use of the Disputed Domain Names The disputed domain names have been resolved to English websites that mimic and contain images and wording taken directly from the Complainant’s official “www.willowtree.com” website (the “Websites”). 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions substantively and only sent an email in Chinese somehow asking how to resolve the dispute. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Websites are English language websites. The Respondent did not file a formal response and did not file any submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel also notes that the relevant case related communications were sent in both English and Chinese and yet that the Respondent did not submit a formal response or comment on the language of the proceeding – and at the same time the brief communications it did send were in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Request to add Additional Domain Name The Complainant requests the addition of the additional domain name The Registrar has confirmed that the additional domain name Section 2.12.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states as follows: “Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed. In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines).” The Panel considers that, exceptionally, the following factors are supportive of the addition of the disputed domain name (i) The disputed domain name Accordingly, the request for addition of the additional domain name is granted. 6.3. Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name The disputed domain name The disputed domain name Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Websites, which have not been authorised by the Complainant, and mimic and – without authorization – take content from the Complainant’s official website. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith In light of the manner of the use of the disputed domain names highlighted in Section 6.B. above, notably the unauthorized taking of content and look and feel from the Complainant’s official site, the Panel finds that the requisite element of bad faith has been made out. The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 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 Sebastian M.W. Hughes
(ii) The disputed domain name
(iii) The composition of the disputed domain name
(iv) The disputed domain name
(v) All three disputed domain names have been registered and used in the same manner, to target the Complainant’s Trade Mark.
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Sole Panelist
Dated: September 15, 2021
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