The Complainant is Xypex Chemical Corporation, Canada, represented by DLA Piper (Canada) LLP, Canada.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Yuejuan Mao, 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 15, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 the Complainant on September 17, 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 on September 21, 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on November 8, 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 a Canada-based corporation active in the field of crystalline waterproofing products. Its products are sold through a network of distributor and licensees operating in more than 90 countries.
The Complainant has used its trademark XYPEX for more than 50 years.
The Complainant owns numerous trademark registrations for XYPEX throughout the world. In particular, the Complainant owns the following trademark registrations:
- Canada trademark registration for XYPEX No. TMA164807, registered on August 22, 1969 in class 19;
- United States trademark registration for XYPEX No. 1,191,928, registered on March 16, 1982, in class 1;
- China trademark registration for XYPEX & design No. 308768, registered on February 20, 1988, in (local) class 26.
The disputed domain name was registered on January 14, 2021.
The disputed domain name redirects to a pornographic website.
The Respondent had five UDRP complaints filed against it, resulting in a decision of transfer.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its XYPEX trademark, because it incorporates such mark entirely, and the addition of the letters “gz”, which are commonly used to refer to the name of the Chinese city of Guangzhou, is insufficient to avoid confusing similarity.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use any domain name incorporating the Complainant’s trademark. Furthermore, the Respondent is not commonly known by the disputed domain name. There is no evidence that the Respondent has ever used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a noncommercial fair use of the disputed domain name. On the contrary, the Respondent has used the disputed domain name for commercial gain in connection with a pornographic website, thus depreciating the goodwill associated with the Complainant’s trademark.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. The Complainant contends in this respect that the Respondent registered the disputed domain name to intentionally attempt to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. Furthermore, the Complainant contends that the Respondent has engaged into a pattern of registering domain names incorporating protected trademarks of third parties, a behavior that also amounts to registration and use in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark 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 registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark XYPEX.
The disputed domain name reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with the prefix “gz”. The evidence on the record shows that the letters “gz” are often used to refer to the name of the city of Guangzhou, China.
UDPR panels consider that where the relevant trademark is recognizable within the 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 of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark XYPEX is clearly recognizable in the disputed domain name. The mere addition of the prefix “gz” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsBased on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.
The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the Respondent used the disputed domain name in connection with a pornographic website.
Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith.
Given the distinctive character of the Complainant’s trademark XYPEX, the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark.
The Respondent used the disputed domain name in relation to a pornographic website. The Panel finds it likely that the Respondent attempted to derive economic benefit from the use of the disputed domain name. A respondent’s use of a domain name comprising a complainant’s trademark in relation to pornography has been considered by prior UDRP panels to constitute bad faith (Xypex Chemical Corporation v. Zou Xue Ming,WIPO Case No. D2020-3202; Hillsong Church, Inc. v. Super Privacy Service LTD c/o Dynadot / Yuejuan mao,WIPO Case No. D2020-1976). The Panel finds that by using the disputed domain name in relation to a website with pornographic contents, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, within the meaning of paragraph 4(b)(iv) of the Policy. Moreover, the Panel finds that such link to a pornographic website is likely to tarnish the reputation of the Complainant’s trademark (see Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst,WIPO Case No. D2005-0636).
The Complainant has also demonstrated that the Respondent has been involved in five previous UDRP procedures, in which panels ordered the transfer of the concerned domain names. The Respondent may accordingly be said to have engaged into a pattern of registering domain names reproducing trademarks of third parties, in order to prevent the owners of the trademarks to reflect them in a corresponding domain name. Such behavior amounts to registration and use in bad faith according to paragraph 4(b)(ii) of the Policy.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 name
Anne-Virginie La Spada
Sole Panelist
Date: November 22, 2021