The Complainant is Grey Orange Pte. Ltd., Singapore, represented by Oblon, McClelland, Maier & Neustadt, L.L.P., United States of America (“United States”).
The Respondent is Ping Wang, China.
2. The Domain Names and RegistrarsThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2021, the Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 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 amendment to the Complaint on September 13, 2021.
The Center verified that the Complaint together with 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 of the Complaint, and the proceedings commenced on September 16, 2021.
On September 24, 2021, the Complainant submitted an unsolicited Supplemental Filing.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.
The Center appointed Adam Taylor, Michael A. Albert, and Matthew Kennedy as panelists in this matter on October 28, 2021. The Panel finds that it was properly constituted. Each member of 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 BackgroundSince 2014, the Complainant has used the mark GREYORANGE in connection with the manufacture and supply of robotics systems for warehouses and distribution/fulfilment centres. The Complainant operates a website at “www.greyorange.com”, which prominently displays its GREYORANGE trade mark with a logo and the tagline “Fulfilling the Future in Real Time”.
The Complainant owns a number of registered trade marks for the stylised term “GREYORANGE” including International trade mark No. 1314522, registered on July 4, 2016, in class 7.
The disputed domain name
The following is a summary of the Complainant’s contentions.
The disputed domain names are identical to the Complainant’s trade mark, apart from the generic Top-Level-Domain (“gTLD”) suffixes.
The Respondent lacks rights or legitimate interests in respect of the disputed domain names. There is no evidence that the Respondent is commonly known by, or that it has ever offered any legitimate goods or services under, the disputed domain names. The Respondent’s use of the disputed domain names to defraud Internet users cannot constitute bona fide use thereof.
The disputed domain names were registered and are being used in bad faith. The Respondent’s websites intentionally copied the Complainant’s trade marks and content as part of a criminal enterprise designed to steal money from Internet users who would think they were dealing with the Complainant. Not only was the Respondent aware of the Complainant and its trade marks when it registered the disputed domain names, it deliberately selected them because they reflected the Complainant’s trade mark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights; and
- 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.
The Complainant has made an unsolicited supplemental filing in order to submit “a certified status and title copy” of one if its registered trade marks. However, this document is not necessary for the Panel’s decision and so the Panel has not found it necessary to admit the filing.
B. Identical or Confusingly SimilarThe Complainant has established rights in the stylised term GREYORANGE by virtue of its registered trade marks. Section 1.10 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The disputed domain names wholly comprise the GREYORANGE mark as their respective operational elements. Their only additional element is a gTLD suffix (either “.club” or “.vip”), which, as a standard requirement of domain name registration, may be disregarded in the comparison between a domain name and a trade mark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.
Accordingly, the Panel concludes that the disputed domain names are identical to the Complainant’s trade mark and that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to impersonate the Complainant and defraud Internet users. Such use of the disputed domain name was clearly not bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad FaithThe disputed domain names were registered in 2021, many years after the registration of the Complainant’s GREYORANGE trade mark.
Given the undisputed evidence of use of the disputed domain names for websites impersonating the Complainant – including use of its name, logo and tagline – and to perpetrate investment scams on Internet users, the Panel readily concludes that the disputed domain names were registered and are being used in bad faith by the Respondent.
For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) 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 disputed domain names
Adam Taylor
Presiding Panelist
Michael A. Albert
Panelist
Matthew Kennedy
Panelist
Date: November 1, 2021