The Complainant is Mito Red Light, Inc., United States of America (“United States”), represented by RM Warner P.L.C., United States.
The Respondent is 林清海 (linqinghai), 深圳市盈择科技有限公司 (shenzhenshiyingzekejiyouxiangongsi), China, represented internally.
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 December 16, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 December 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 3, 2022, the Complainant requested an extension to translate the Complaint into Chinese. On January 4, 2022, the Center confirmed that the due date for the Complaint to translate the Complaint was January 19, 2022. The Complainant filed an amended Complaint in Chinese on January 19, 2022; and also requested 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 proceeding commenced on January 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2022. On February 9, 2022, the Respondent filed a request in English to extend the Response due date by additional four calendar days. The Center confirmed on the same day that in accordance with paragraph 5(b) of the Rules, the due date for Response was extended to February 13, 2022. The Response was filed in Chinese with the Center on February 12, 2022.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 22, 2022. 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.
On March 7, 2022, the Panel issued Procedural Panel Order No. 1 (the “Order”), requesting the Complainant to provide evidence of the use by the Complainant’s predecessors in title of the Complainant’s relevant trade marks prior to December 4, 2017, and evidence of the assignment of the relevant rights and goodwill therein to the Complainant, and allowing the Respondent to comment on the Complainant’s submissions in response to the Order.
On March 14, 2022, the Complainant filed its response to the Order.
The Respondent did not file any submissions in respect of the Order by the deadline of March 21, 2022.
4. Factual Background A. ComplainantThe Complainant is a company incorporated in 2019 in the State of Arizona in the United States. The Complainant and its predecessor in title have manufactured and sold red light therapy devices for use in the healthcare and beauty industry since December 2018, under the trade mark MITO RED LIGHT (the “Trade Mark”).
The Complainant’s predecessor in title registered the domain name
The Complainant is the owner of United States registration No. 5,960,192 for the Trade Mark, with a registration date of January 14, 2020.
B. RespondentThe Respondent is a company incorporated in 2020 in Shenzhen, China. The Respondent’s business focuses on the design, development, and sale of light therapy, light beauty, and other products, including red light therapy cushions, red light therapy bulbs, and other products marketed and sold under the trade mark RED MITO.
The Respondent sells its products mainly using independent websites and cross-border e-commerce platforms such as Amazon and Wal-Mart.
The Respondent is the owner of United Kingdom registration No. UK00003632246 for the RED MITO trade mark, with a registration date of September 3, 2021; the owner of Japanese registration No. 6502149 for the RED MITO trade mark, with a registration date of January 20, 2022; the applicant for registration of the RED MITO trade mark in the United States, under application No. 90608710, filed on March 29, 2021 (and claiming a date of first use in commerce of March 27, 2021); the applicant for registration of the RED MITO trade mark in the European Union, under application No. 018438177, filed on March 25, 2021; and the applicant for registration of the RED MITO trade mark in China, under application No. 59889085, filed on October 18, 2021.
C. The Disputed Domain NameThe disputed domain name was registered on December 4, 2017. It was purchased by the Respondent on April 14, 2021.
D. Use of the Disputed Domain NamePrior to the filing of the Complaint, the evidence filed by the Complainant shows that the disputed domain name resolved to a coming soon website in English on December 7, 2021.
As at the date of this Decision, the disputed domain name is resolving to an English language website, apparently unrelated to the Respondent, offering for sale handbags, travel bags, satchels, and shoulder bags, and with an address and contact telephone number in Las Vegas, Nevada in the United States.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.
B. RespondentThe Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark; the Respondent has rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has not been registered and is not being used in bad faith.
6. Discussion and Findings 6.1. Preliminary Issue – Language of the ProceedingPursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant filed an amended Complaint in Chinese on January 19, 2022, but requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding but filed the Response in Chinese on February 12, 2022.
The Panel notes that the Respondent’s communications to the Center were sent in English or in English and Chinese; and prior to the filing of the Complaint, the disputed domain name resolved to an English language website. Therefore, the Panel concludes that the Respondent understands, and is able to communicate in English.
Considering the above and lack of the Respondent’s comment on the language of the proceeding, the Panel grants the Complainant’s request for English to be the language of the proceeding, and the Decision is accordingly issued in English.
6.2. Substantive IssuesThe Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name consists of dominant features of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) – namely, the words “red” and “mito” (in reverse order).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see WIPO Overview 3.0, section 2.1).
The Respondent contends that: (i) prior to receipt of the Complaint, it did not know of the existence of the Complainant; and (ii) it registered the disputed domain name because “red mito” is an abbreviation of “red mitochondria” and the disputed domain name reflects its trade mark RED MITO. The Panel notes that although “red” and “mitochondria” are both dictionary words, their combination does not appear to be common, the Respondent’s trade mark was pending for registration when it purchased the disputed domain name, and there is no evidence on record showing any sale of the products under the RED MITO brand prior to the Respondent’s purchase of the disputed domain name.
The Respondent contends that it has invested a lot of manpower and material resources (in total, about CNY 345,000), hoping to make RED MITO into a well-known brand of light physiotherapy products, including:
(i) CNY 6,503 to buy the disputed domain name;
(ii) about CNY 3,000 to build an independent website;
(iii) CNY 6,000 for website articles and videos;
(iv) about CNY 2,500 for promotion;
(v) about CNY 200,000 for manpower and other investment;
(vi) about CNY 27,000 in trade mark application/registration fees; and
(vii) CNY 100,000 in advertising fees on the Amazon platform.
The Respondent submits that RED MITO and MITO RED LIGHT are very different, and the Respondent has not sold the same red light therapy products as the Complainant.
The Complainant on the other hand submits that, by virtue of its application for registration of the Trade Mark in the United States, the Respondent had constructive notice of the Complainant and of its rights in the Trade Mark prior to the date of purchase by the Respondent of the disputed domain name, in April 2021.
It is not in dispute that the Complainant has purchased a sample of the Respondent’s RED MITO red light therapy product (although, regrettably, the Complainant has been unable to submit any evidence as to when, how and for what price it purchased the sample product). The Complainant also relies upon an email request from a customer as evidence of confusion – the customer having purchased the Respondent’s RED MITO red light therapy product from Amazon, and having then sent an email request to the Complainant, on December 6, 2021, as follows:
“Model: Red Mito REDMITO000385
I purchased this off Amazon recently and I notice it’s not online anymore. I wanted to see I can purchase the portable battery for it.”
It is clear that, notwithstanding the Respondent’s assertion to the contrary, the Respondent manufactures and sells the same type of red light therapy products, under the RED MITO brand, as the red light therapy products manufactured and sold by the Complainant and its predecessor in title since December 2018.
The Panel also considers that the fact the Respondent does not appear to have made any use of the disputed domain name prior to the filing of the Complainant (whether in relation to its RED MITO red light therapy products, or otherwise); and that the disputed domain name is now being used in respect of the online sale of apparently unrelated bag products, from an address in Las Vegas, Nevada in the United States, does not sit well with the Respondent’s assertion of rights or legitimate interests for the purposes of the Policy. Further, the Respondent does not provide any evidence regarding the use of the disputed domain name.
The Panel also notes the comment in the customer email quoted above that the Respondent’s product was “not online anymore” in December 2021.
The Panel notes also that the red light therapy products manufactured and sold by the Complainant since December 2018 under the Trade Mark are specialized, niche products. In all the circumstances, the Panel considers it is more likely that the Respondent was aware of the Complainant and its products at the time it purchased the disputed domain name, applied for registration of its RED MITO trade mark in several jurisdictions, and commenced marketing and selling its RED MITO red light therapy products online, including to consumers in the United States, via Amazon, Wal-Mart, and other third party platforms.
There has been no evidence adduced to show that the Respondent has used the disputed domain name for a bona fide offering of goods or service; and there has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithFor the reasons set out in Section 6.2B above, the Panel concludes that the Respondent was aware of the Complainant and its Trade Mark at the time of purchase of the disputed domain name; and that, notwithstanding its passive holding of the disputed domain name prior to the filing of the Complaint, the evidence demonstrates that the Respondent targeted the Complainant and its Trade Mark in purchasing the disputed domain name. The Respondent’s unexplained use of the disputed domain name in its Response, and the current use of the disputed domain name in relation to an unrelated third party bag retail website, provide further support for a finding of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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
Sebastian M.W. Hughes
Sole Panelist
Dated: April 14, 2022