WIPO Domain Name Decision D2021-3270 for willowartwork.com, willowtreeart.net, willowtreenote.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Susan Lordi v. 王显莲 (Wang Xian Lian), 东莞市昇辉仓储服务有限公司 (Dong Guan Shi Sheng Hui Cang Chu Fu Wu You Xian Gong Si) Case No. D2021-3270 1. The Parties

The Complainant is Susan Lordi, United States of America (“United States”), represented by Hovey Williams LLP, United States.

The Respondent is 王显莲 (Wang Xian Lian), 东莞市昇辉仓储服务有限公司 (Dong Guan Shi Sheng Hui Cang Chu Fu Wu You Xian Gong Si), China.

2. The Domain Names and Registrar

The disputed domain names , , and are all registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English regarding the disputed domain name with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On October 8, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 11, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Complainant filed an amended Complaint in English on October 19, 2021 requesting to add the disputed domain names and to the proceedings. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the two additional disputed domain names. On the following day, the Registrar transmitted by email to the Center its verification response confirming that the registrant and contact information for the two additional disputed domain names was the same as that specified in the amended Complaint.

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 October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 10, 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 designs, manufactures and sells figurines and home décor. She holds multiple trademark registrations for WILLOW TREE in multiple jurisdictions, including:

- United States trademark registrations numbers 2687795, 3572110, and 3958583, registered on February 18, 2003, February 10, 2009, and May 10, 2011, respectively, specifying goods in classes 20 and 24, 28, and 16, respectively; and

- Chinese trademark registration number 11633838, registered on March 28, 2014, specifying goods in class 28.

The above trademark registrations remain current. The Complainant has licensed the above marks to authorized distributors in certain territories. The Complainant has also registered the domain name that is used in connection by an authorized distributor in connection with a website offering for sale her figurines.

The Respondent is named as an individual and a warehouse services company. They are listed as the registrant of all three disputed domain names in the Registrar’s WhoIs database.

The disputed domain names , , and were registered on August 12, 2021, August 21, 2021, and August 23, 2021, respectively. The disputed domain names formerly resolved to websites in English titled “Willowtreeart”, “willowartwork”, and “Willowtreenote”, respectively, offering for sale the Complainant’s WILLOW TREE figurines. The websites displayed the Complainant’s figurines and her photograph. Prices were displayed in EUR or USD. At the time of this decision, all three disputed domain names no longer resolve to any active website; rather, they are passively held. According to evidence provided by the Complainant, three Facebook accounts formerly advertised the Complainant’s figurines and linked to the websites associated with the disputed domain names.

5. Parties’ Contentions A. Complainant

The disputed domain names are confusingly similar to the Complainant’s WILLOW TREE marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not an authorized distributor of the Complainant’s WILLOW TREE figurines nor a licensee of the Complainant’s WILLOW TREE marks. The Respondent is not, and never has been, affiliated with the Complainant or its authorized distributors or licensees. The disputed domain names were also linked to fraudulent Facebook accounts. The Respondent is not commonly known by the disputed domain names.

The disputed domain names were registered and are being used in bad faith. They incorporate the Complainant’s WILLOW TREE marks and resolve to fraudulent websites. The Respondent is intentionally attempting to traffick Internet users through the Respondent’s websites, for commercial gain, by fraudulently holding itself out to be the Complainant, or a licensee or authorized distributor of the Complainant’s WILLOW TREE marks and well-known WILLOW TREE products, all in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings 6.1. Preliminary Issues A. Addition of Domain Names to the Proceeding

The amended Complaint requested to add the disputed domain names and to this proceeding after the Complainant received notification of the Registrar-verified identity of their underlying registrant. The additional disputed domain names are held by the same registrant as the disputed domain name identified in the original Complaint (). The amended Complaint was filed prior to the notification of the original Complaint to the Respondent and the formal commencement of the proceeding. Accordingly, the Panel adds these two disputed domain names to this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.1.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreements for the disputed domain names are all in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names contain English words and resolve to websites entirely in English, and the associated Facebook accounts were also entirely in English, which shows that the Respondent is familiar with the English language; and translation of the amended Complaint would create an unfair burden for the Complainant as it would require significant time and cost, and delay the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The websites to which the disputed domain names resolve or formerly resolved are also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(i) the disputed domain name 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the WILLOW TREE mark.

The disputed domain names and incorporate the WILLOW TREE mark as their respective initial elements, omitting only the space between the words for technical reasons. They also include the words “art” or “note” but the mark remains clearly recognizable within both these disputed domain names.

The disputed domain name incorporates, as its initial element, the word “willow”, which is the dominant element of the WILLOW TREE mark. This disputed domain name also includes the word “artwork” but the dominant element of the mark remains clearly recognizable within the disputed domain name.

The disputed domain names also include a generic Top-Level Domain (“gTLD”) suffix (either “.net” or “.com”). As a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain names and the trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the 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 the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain names resolve or formerly resolved to websites offering the Complainant’s figurines for sale. The disputed domain names wholly incorporate the Complainant’s WILLOW TREE mark, or its dominant element (“willow”), while the sites to which they resolve or formerly resolved display the Complainant’s figurines. Regardless of whether the products displayed are genuine, the websites contain no disclaimer that the Respondent has no relationship with the Complainant; on the contrary, they displayed a photograph of the Complainant and gave the impression that they were operated by, or affiliated with, the Complainant. Yet the Complainant submits that the Respondent is not an authorized distributor of the Complainant’s WILLOW TREE figurines nor a licensee of the Complainant’s WILLOW TREE marks. The disputed domain names are now passively held. These circumstances indicate that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. These circumstances also indicate that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “王显莲 (wang xian lian), 东莞市昇辉仓储服务有限公司 (dong guan shi sheng hui cang chu fu wu you xian gong si”, which may be translated as “Dongguan Shenghui Warehousing Service Co., Ltd”, not the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location.

With respect to registration, the disputed domain names were registered in 2021, years after the registration of the Complainant’s WILLOW TREE trademark, including in China, where the Respondent is located. The disputed domain names incorporate the WILLOW TREE mark or its dominant element as their respective initial elements. They resolve or formerly resolved to websites offering the Complainant’s figurines for sale. There can be little doubt that the Respondent had the Complainant’s WILLOW TREE mark in mind at the time that it registered the disputed domain names.

With respect to use, the disputed domain names resolve or formerly resolved to websites offering for sale the Complainant’s figurines. Given the Panel’s findings in Section 6.2.B. above, the Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of a product on the Respondent’s websites, within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain names has changed and that they no longer resolve to any active website. This change of use does not alter the Panel’s conclusion; it may actually constitute a further indication of bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 , , and be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 20, 2021

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