The Complainant is Susan Lordi, United States of America (“United States” or “US”), represented by Hovey Williams LLP, United States.
The Respondent is 马世界 (ma shi jie), 中巴虹安（杭州）科技有限公司 (zhong ba hong an (hang zhou) ke ji you xian gong si), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 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 July 28, 2021.
On July 24, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 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 proceedings commenced on August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on September 17, 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 BackgroundThe Complainant is the creator and designer of figurine sculptures sold under the trade mark WILLOW TREE since 2000. Her business is headquartered in Kansas City, Missouri and she owns a number of trade mark registrations for WILLOW TREE in the United States, the European Union, Australia, Canada, United Kingdom, the Russian Federation and China. The earliest trade mark submitted in evidence, US Trade Mark Registration no. 2687795 was registered on February 18, 2003 (the “Trade Mark”).
The Complainant’s products are sold in many different online and bricks and mortar outlets including the website “www.willowtree.com” which is run and operated by one of her business partners (the “Official Website”). The Complainant has established reputation and goodwill in the Trade Mark in the specialized market she operates.
The Respondent, based in China, registered the Domain Name on May 12, 2021. The Domain Name resolved to a website which reproduces the pages of the Official Website including offering for sale figurine sculptures bearing the Trade Mark that appear identical to the designs of the Complainant’s products at discounted prices (the “Website”). The Website is no longer active.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. GeneralAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which
the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Language of ProceedingThe Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Domain Name consists of words or misspelling of words in the English language;
- the Website is written entirely in English which shows that the Respondent is familiar with the English language;
- the pricing of the products on the Website are in USD;
- the Complainant is unable to communicate in Chinese and translation of the Complainant would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of the matter.
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 accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding be conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.
In this case, the Domain Name consists of a misspelling of the Trade Mark by the inversion of the letters “i” and deletion of one of the letters “l” in the word “willow”.
It is well established that domain names which consist of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is a typical typosquatting case as the Domain Name is clearly a misspelling of the Trade Mark.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not referred to or commonly known by the Domain Name or the Trade Mark. The Respondent is not an authorised licensee or distributor of the Complainant’s products. The Complainant has not authorised the Respondent to use the Trade Mark in any way including as a domain name. It would appear that the products on sale on the Website are counterfeit goods. There can be no legitimate interests in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM,WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad FaithTo succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name. Further the Website purports to be either the Complainant’s website or one that is authorised or connected to the Complainant. The Trade Mark features prominently on the Website and the goods being sold purport to be the goods of the Complainant. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The very incorporation of a misspelling of the Trade Mark in the Domain Name and the display of the Trade Mark and the offer for sale of non-genuine Willow Tree products on the Website confirm the Respondent’s awareness of the Trade Mark. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are also significant factors to consider. The Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are likely to be counterfeit Willow Tree products. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren,WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019).
The content of the Website is calculated to give the impression that it has been authorized by or connected to the Complainant when this is not the case. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
Further, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings,WIPO Case No. D2006-0235, typosquatting - intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name - is presumptive evidence of bad faith in registration and use of a disputed domain name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Karen Fong
Sole Panelist
Date: October 5, 2021