The Complainant is Susan Lordi, United States of America (the “United States”), represented by Hovey Williams LLP, the United States.
The Respondents are 林熠 (Lin Yi), China, ds ds, the United States. 2. The Domain Names and Registrars
The disputed domain name 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 18, 2021 and May 19, 2021, the Registrars transmitted by email to the Center their 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 May 24, 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 in English on May 25, 2021. The Complainant filed an amendment to the Complaint in English on May 31, 2021. On May 28, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 31, 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 and the amendment to 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 in English and Chinese of the Complaint, and the proceedings commenced on June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. The Center received a third party’s communication by email on June 7, 2021. On July 11, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Douglas Clark as the sole panelist in this matter on July 25, 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 an individual specialising in the design, manufacture, sale, and distribution of WILLOW TREE figurines and home decorations since as early as the year 2000. The Complainant owns several trade mark registrations for WILLOW TREE in several countries, including the following: Trade Mark Trade Mark Number Registration Date Jurisdiction WILLOW TREE 2687795 February 18, 2003 United States WILLOW TREE 3572110 February 10, 2009 United States WILLOW TREE 3958583 May 10, 2011 United States WILLOW TREE 1013063 July 27, 2004 Australia WILLOW TREE 003953239 November 25, 2005 European Union WILLOW TREE UK00903953239 November 25, 2005 United Kingdom WILLOW TREE 1510409 December 19, 2019 International WILLOW TREE 11633838 March 28, 2014 China WILLOW TREE 11633840 January 7, 2015 China WILLOW TREE TMA644538 July 15, 2005 Canada WILLOW TREE 673418 October 1, 2018 Russia The disputed domain names The Complainant contends that: (a) The disputed domain names are confusingly similar to its trade mark. The addition of the letter “s” or letters “ss” respectively in the disputed domain names do not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain names and the trade mark are associated; (b) The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondents are not commonly known by the disputed domain names, and have not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and (c) The disputed domain names were registered and are being used in bad faith. The Respondents have used the WILLOW TREE trade mark to attract users to the Respondents’ fraudulent websites. The Respondents also registered disputed domain names that incorporate the WILLOW TREE trade mark in its entirety. The Respondents are using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues – Language of Proceedings According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In this case, the language of the Registration Agreement for the disputed domain name a) the Registration Agreement for b) the disputed domain names consist of variations of words in the English language; c) the websites the disputed domain names resolve to are written entirely in English; and d) the pricing of the products advertised in the disputed domain names are in United States dollars, creating a further connection to the English language. In accordance with paragraph 11(a) of the Rules and taking into consideration paragraph 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances: - the Center has notified the Respondents of the proceeding in both English and Chinese; - an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding; and - the content on the Respondents’ websites are entirely in English. Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”. The Panel should add that as a matter of practice, without evidence to the contrary, a panel must accept the Registrar’s statement as to what the language of the registration agreement is. The mere fact that an English language registration agreement can be found on a registrar’s website is not sufficient to establish the actual registration agreement in issue is in English. 6.2 Preliminary Issues – Multiple Domain Names and Respondents The Panel notes that the present Complaint has consolidated multiple domain name disputes and is filed against multiple respondents. According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name and/or respondent, provided that the domain names are arguably registered by the same domain-name holder. The Panel has the authority to consolidate multiple domains into one dispute provided that (i) the domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. (See sections 4.11.2 and 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)) In this case, the Complainant relies on the following facts to show that the disputed domain names are subject to common control: - the Complainant believes that the Respondents are the same person, or at least exercise common control over the disputed domain names, as the email address for - the contact phone number for both the disputed domain names are identical; - the disputed domain names were registered 18 days apart; - the disputed domain names are comprised of variations of the Complainant’s WILLOW TREE trade mark; - the disputed domain name For the above reasons, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the Complaint. 6.3 Substantive Issues The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action: (i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights; (ii) the 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. Identical or Confusingly Similar The Panel finds that the disputed domain names Both the disputed domain names incorporate the WILLOW TREE trade mark in full. The disputed domain name The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element. (see section 11.1 WIPO Overview 3.0) The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Complainant asserts that the Respondents have no business with and is in no way affiliated with the Complainant. The Respondents are not authorized nor licensed to use the Complainant’s WILLOW TREE trade mark or to apply for registration of the disputed domain name. There is no evidence that the Respondents are commonly known by the name “WILLOW TREE”. Furthermore, the disputed domain names are being used for fraudulent purposes. The use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0). There is also no other evidence that the Respondents have used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondents have not responded to any of the Complainant’s contentions. The Respondents have not asserted any rights or legitimate interests in relation to the disputed domain names. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests, which has not been rebutted by the Respondents. Accordingly, the Respondents have no rights or legitimate interests in regard to the disputed domain names. C. Registered and Used in Bad Faith Based on the given evidence, the Panel finds the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered long after the Complainant has registered the WILLOW TREE trademark and the use of the Complainant’s WILLOW TREE trademark in both the disputed domain names cannot be a coincidence. The WILLOW TREE trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for over 20 years. In addition, both the disputed domain names have substantially copied the WILLOW TREE trade mark and product images from the Complainant’s website at “www.willowtree.com”. The Panel is satisfied that the Respondents were aware of the Complainant and its WILLOW TREE trade mark when they registered the disputed domain names. It appears that the disputed domain names were used to create fraudulent websites that prominently display the WILLOW TREE trade mark and allegedly sell products made by the Complainant. The Panel is satisfied that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark. For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has therefore 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 Douglas Clark
Susan Lordi
Sole Panelist
Date: August 12, 2021
Full & Egal Universal Law Academy