Complainant is Deluxe Gain Holdings Limited, Hong Kong, China, represented by Bryan Cave Leighton Paisner, United States of America (“United States” or “US”).
Respondent is Super Privacy Service Ltd (c/o Dynadot), United States / Wu Yu, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2021, the Registrar transmitted by email to the Center its verification response 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 Complainant on September 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 18, 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 Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2021.
The Center appointed Yijun Tian, Carol Anne Been and C. K. Kwong as panelists in this matter on November 10, 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 BackgroundComplainant, Deluxe Gain Holdings Limited, is a company incorporated in Hong Kong, China. Founded in 1930, Complainant is a world leading company manufacturing and selling a range of collectible dolls under the brand name “Madame Alexander”. Its Madame Alexander dolls have been featured in the Smithsonian Museum and sold in over 2,000 retail stores throughout the world.
Complainant has rights in MADAME ALEXANDER, and MADAME ALEXANDER related marks (hereinafter “MADAME ALEXANDER marks”). Complainant is the owner of numerous MADAME ALEXANDER marks in the US, such as a US trademark registration for MADAME ALEXANDER registered on December 5, 2000 (the US Trademark Registration No. 2410485) (Annex 5 to the Complaint) and it claims a first use date for dolls of 1930.
Complainant also registered its own domain name, which contains the MADAME ALEXANDER trademark, such as
Respondent is Super Privacy Service Ltd (c/o Dynadot), United States / Wu Yu, China. The disputed domain name
Complainant contends that the disputed domain name
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary MattersThe Panel notes that no communication has been received from Respondent. However, given that notification of the Complaint was duly sent to all of the post or email addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from Respondent’s failure to file any Response. While Respondent’s failure to file a Response does not automatically result in a decision in favor of Complainant, the Panel may draw appropriate inferences from Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
6.2. Substantive MattersParagraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel finds that Complainant has rights in the MADAME ALEXANDER marks. The disputed domain name
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Further, in relation to the gTLD, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “com”, “club”, “nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. (WIPO Overview 3.0, section 1.11.1.)
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
The MADAME ALEXANDER marks have been registered in the US since 2000, which long precede Respondent’s registration of the disputed domain name (in 2021). According to the Complaint, Complainant is a world leading company manufacturing and selling a range of collectible dolls under the brand name “Madame Alexander” since 1930. Its Madame Alexander dolls have been featured in the Smithsonian Museum and sold in over 2,000 retail stores throughout the world.
Moreover, Respondent is not an authorized dealer of MADAME ALEXANDER branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “madame alexander” in the disputed domain name and in his business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MADAME ALEXANDER marks or to apply for or use any domain name incorporating the MADAME ALEXANDER marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent currently has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2021, long after the MADAME ALEXANDER marks became internationally known. The disputed domain name is confusingly similar to the MADAME ALEXANDER marks;
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, as mentioned above, the disputed domain name currently resolves to a PPC website in English, which contains links for services that are related to or compete with Complainant. It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo,WIPO Case No. D2017-1041; Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang),WIPO Case No. D2020-3358.)
The Panel notes that Respondent has not produced any evidence to establish rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has established on balance that Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
(a) Registration in Bad Faith
The Panel finds that Complainant has widespread reputation as a world leading doll company, which is dedicated to manufacturing and selling a range of collectible dolls under the brand name “Madame Alexander” since 1930. As mentioned above, its Madame Alexander dolls have been sold in over 2,000 retail stores throughout the world. MADAME ALEXANDER marks have been registered in the US since 2000. It is not conceivable that Respondent would not have had actual notice of the MADAME ALEXANDER marks at the time of the registration of the disputed domain name (in 2021). The Panel therefore finds that the MADAME ALEXANDER mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(b) Use in Bad Faith
Respondent used the disputed domain name to resolve to a website that contains PPC links to third-party commercial websites which competes with Complainant. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.
Given the reputation of the MADAME ALEXANDER marks, the Panel finds that the Internet users are likely to be confused into thinking that the disputed domain name has connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has, through the use of confusingly similar disputed domain name, created a likelihood of confusion with the MADAME ALEXANDER marks. Moreover, as mentioned above, Respondent redirects Internet users to third parties’ websites via the PPC links in the website to which the disputed domain name resolved, presumably for commercial gain.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the MADAME ALEXANDER marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the Panel finds that the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
7. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Yijun Tian
Presiding Panelist
Carol Anne Been
Panelist
C. K. Kwong
Panelist
Date: November 22, 2021
1 See http://ww16.madamealexanderdollsupplies.com/?sub1=20211123-0125-25ac-8e15-aa58aa65de95