The Complainant is Susan Lordi, United States of America, represented by Hovey Williams LLP, United States of America.
The Respondent is 林洪国 (lin hong guo), 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 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 name. On October 8, 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 the same day 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 October 12, 2021.
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 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 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 BackgroundThe 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
The Respondent is an individual resident in China. According to evidence provided by the Complainant, a UDRP panel in prior proceeding under the Policy found that the Respondent had, in bad faith, registered and was using three other domain names that incorporated the Complainant’s WILLOW TREE mark. See Susan Lordi v. Lin Hong Guo,WIPO Case No. D2021-1523.
The disputed domain name was registered on April 16, 2021. It resolves to a website in English that prominently displays the WILLOW TREE mark with the ® symbol and offers for sale the Complainant’s WILLOW TREE figurines. The website reproduces material from the Complainant’s website, including a presentation of the Complainant’s business with images of the Complainant and of her figurines. Prices are displayed in USD.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s WILLOW TREE mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. It incorporates the Complainant’s WILLOW TREE marks and resolves to a fraudulent website. The Respondent is intentionally attempting to traffick Internet users through the Respondent’s website, 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. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 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 Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name contains English words and resolves to a website 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 website to which the disputed domain name resolves is 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 IssuesParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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 SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the WILLOW TREE mark.
The disputed domain name incorporates the WILLOW TREE mark as its initial element, omitting only the space between the words for technical reasons. It adds a plural “s” but the mark remains clearly recognizable within the disputed domain name.
The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix (“.shop”). As a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain name and the trademark for the purposes of the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is 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 InterestsParagraph 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 name resolves to a website offering the Complainant’s figurines for sale. The disputed domain name wholly incorporates the Complainant’s WILLOW TREE mark, while the site to which it resolves displays the WILLOW TREE mark and the Complainant’s figurines. Regardless of whether the products displayed are genuine, the website contains no disclaimer that the Respondent has no relationship with the Complainant; on the contrary, it displays material from the Complainant’s own website with a photograph of the Complainant herself that all gives the impression that the website is 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. These circumstances indicate that the Respondent is not using the disputed domain name 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 name, without intent for commercial gain.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “林洪国 (lin hong guo)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.
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 name. The Respondent failed to rebut that prima facie case because he or she 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 name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 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 name was registered in 2021, years after the registration of the Complainant’s WILLOW TREE trademark, including in China, where the Respondent is resident. The disputed domain name incorporates the WILLOW TREE mark as its initial element. It resolves to a website that prominently displays the WILLOW TREE mark with the ® symbol, reproduces material from the Complainant’s website and offers 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 he or she registered the disputed domain name.
With respect to use, the disputed domain name resolves to a website that reproduces material from the Complainant’s website and offers 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 name intentionally to attract, for commercial gain, Internet users to his or her 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 website, within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 name
Matthew Kennedy
Sole Panelist
Date: December 20, 2021