ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Normann Copenhagen ApS v. Hui Zhu Case No. D2023-0768 1. The Parties The Complainant is Normann Copenhagen ApS, Denmark, represented by Poul Schmith, Kammeradvokaten, Denmark. The Respondent is Hui Zhu, China. 2. The Domain Name and Registrar The disputed domain name, , is registered with Name.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2023. On February 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 February 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2023. The Center appointed David Stone as the sole panelist in this matter on March 28, 2023. 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. page 2 4. Factual Background The Complainant is a Danish design company, retailing a collection of furniture, lighting, textiles and home accessories, to more than 80 countries worldwide. The Complainant owns numerous trade marks, including the following (the Marks). - : ,United States of America registration number 5447354, registered on April 17, 2018 in international classes 08, 11, 20, 21, 24, 27, 30 and 35; - : , Chinese registration number 23207049, registered on March 7, 2018 in international class 08; - : , Chinese registration number 23207048, registered on June 14, 2018 in international class 11; - : , Chinese registration number 23207047, registered on June 7, 2018 in international class 20; - : , Chinese registration number 44006747, registered on January 28, 2021 in international class 21; - : ,Chinese registration number 23206931, registered on June 7, 2018 in international class 27; - : , Chinese registration number 23206930, registered on June 7, 2018 in international class 30; and - : , ,Chinese registration number 23206928, registered on March 7, 2018 in international class 40. In addition, the Complainant operates an online retail store at the domain name . The disputed domain name was registered on July 19, 2022, and resolves to a website allegedly selling the Complainant's NORMANN-branded products, reproducing without any authorization the Complainant's trademarks. The Complainant's legal representative sent two cease-and-desist letters to the Respondent via its website, on January 4 and January 17, 2023. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the Marks. The disputed domain name differs from the Marks only in the addition of the generic term "stores". Both the disputed domain name and the Marks include the same distinctive element: the term "normann". The likelihood of confusion is apparent from the inclusion of the text "normann copenhagen" on the home page of the website which the disputed domain name directs to. Further, the "About Us" section of this website includes text where the Respondent represents itself as the Complainant. In addition, the Complainant's own products feature on the website, with images of the Complainant's actual products. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is being used to direct customers seeking the page 3 Complainant's website to the Respondent's website, by suggesting that the website to which the disputed domain name resolves is actually held by the Complainant. The Complainant contends that the Respondent registered and is using the domain name in bad faith. In using the disputed domain name, the Respondent intentionally attempts to attract consumers for commercial gain. This is achieved by creating a likelihood of confusion, with the Complainant's Marks, as to any sponsorship, affiliation or endorsement of the Respondent's website, location, or the products and services offered. Evidence of the Respondent's bad faith is further demonstrated by its lack of response to two cease-and-desist letters, which were sent by the Complainant to the website to which the disputed domain name resolves. The Respondent has continued its infringing use after these communications were sent. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed: (i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar On the evidence provided by the Complainant, the Panel is satisfied that the Complainant has rights in the Marks. In assessing the similarity between the disputed domain name and the Marks, it is permissible to ignore the Top-Level Domain ".com". The disputed domain name therefore comprises the entire text of the Marks in addition to the term "stores". Where a trade mark is recognizable within a disputed domain name, the presence of an additional descriptive term does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8). As contended by the Complainant, the word "stores" is a descriptive term, which is commonly used in retail. It has been established that the addition of this term to a trade mark does not avoid a finding of confusing similarity. See, for example, Magpul Industries Corp. v. 丽华 李 , WIPO Case No. D2023-0350, where the domain name was held to be confusingly similar to the trade mark MAGPUL. The Panel therefore finds that the disputed domain name is confusingly similar to the Marks, and concludes that the condition in paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a 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 organisation) has been commonly known by the disputed domain name, even if the respondent has acquired no trade mark or service mark rights; or page 4 (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue. The disputed domain name resolves to a website that reproduced images of the Complainant's products from the Complainant's official website, displayed them in a format similar to that of the Complainant's official website, and offered the products for sale, implying a (false) association with the Complainant. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods and services, which is also not a legitimate noncommercial or fair use of the disputed domain name. Furthermore, there is no evidence indicating that the Respondent has been commonly known by the disputed domain name. The Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has provided no evidence to contradict it. The Panel concludes that the Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to: (i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit; (ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct; (iii) disrupt the business of a competitor; or (iv) divert Internet traffic for commercial gain. The Complainant has provided evidence that the Respondent's website, accessed via the disputed domain name, uses the Complainant's images to advertise the Complainant's products and includes text with the words "normann copenhagen", as featured on the Complainant's online retail store. The Respondent has provided no explanation of its behavior, and so the Panel concludes that the Respondent has devised and registered the disputed domain name to create a false and misleading impression of association between the disputed domain name and the Complainant. The Panel finds that the Respondent is exploiting the confusing similarity between the disputed domain name and the Complainant's marks to divert Internet users searching for the Complainant's products, and to deceive users as to the origin of the advertised products. The "About Us" section of the Respondent's website includes text where the Respondent represents itself as the Complainant, through repeated use of the pronoun "our" when referencing "Normann Copenhagen Store", The use of a domain name for illegal activity, such as impersonation/ passing off, can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1). The Panel concludes that the Respondent is using the disputed domain name to impersonate the Complainant and to divert Internet traffic for its own commercial gain. The condition in paragraph 4(a)(iii) is therefore met. page 5 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 name, , be transferred to the Complainant. /David Stone/ David Stone Sole Panelist Date: April 11, 2023
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