ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION HOP LUN BRANDS LTD v. Cao Li Case No. D2023-4253 1. The Parties Complainant is HOP LUN BRANDS LTD, Ireland, represented by Gevers Legal, Belgium. Respondent is Cao Li, China. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with Gname.com Pte. Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2023. On October 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Anonymous) and contact information in the Complaint. The Center sent an email communication to Complainant on October 18, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on October 24, 2023. On October 18, 2023, the Center informed the parties in Chinese and English, that the language of the registration agreement for the Domain Name is Chinese. On October 19, 2023, Complainant requested English to be the language of the proceeding. Respondent did not submit any comment on Complainant's submission. The Center verified that the Complaint together with the amendment to 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 Respondent in Chinese and English of the Complaint, and the proceedings commenced on October 26, 2023. In accordance with the page 2 Rules, paragraph 5, the due date for Response was November 15, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 16, 2023. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 23, 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. 4. Factual Background Complainant, based in Ireland, sells women's underwear internationally, under the DORINA trademark. Complainant owns several registered trademarks in various jurisdictions, including: - International registered trademark number 459457 (designating Austria, France, Germany, Democratic People's Republic of Korea, Morocco, Viet Nam, Benelux) for the DORINA word mark, registered on February 19, 1981; - European Union registered trademark number 016166431 for the DORINA word mark, registered on April 6, 2017; - Hong Kong, China registered trademark number 304279195 for the DORINA word mark, registered on September 20, 2017; and - United States of America ("United States") trademark registration number 5462686 for the DORINA word mark, registered on May 8, 2018. Complainant sells its DORINA-branded products through its retail stores, outlet stores, authorized retailers, and website, including , registered since 2000. The Domain Name was registered on October 26, 2022, and initially reverted to a webpage that appeared to imitate Complainant's website and advertised Complainant's products. This website displayed the DORINA word mark, and duplicated Complainant's logo, copyrighted texts, and images obtained from Complainant's website. The Domain Name also had active mail exchange ("MX") records, indicating that Respondent can send emails through the email address "[.]@dorinashop.com". On September 6, 2023, an employee of Complainant and President of Complainant's United States subsidiary, made a purchase of a purported DORINA-brand item from the website linked to the Domain Name. The payment was processed by a third-party entity, Ftdiversity Trading Ltd. Subsequently, Complainant's employee did not receive an order or shipping confirmation, and as of the filing of the Complaint, he did not receive the goods he ordered and paid for. His attempts to contact the website have been unanswered. On October 10, 2023, Complainant's representatives sent a cease and desist letter to Respondent's Registrar, informing the Registrant of Complainant's rights, and that Respondent was purportedly marketing and selling DORINA products without authorization, and that Respondent should immediately suspend or cancel registration of the Domain Name. Respondent did not reply. At the time of the filing of the Complaint, the Domain Name directed to an inactive page. 5. Parties' Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. page 3 In particular, Complainant contends that it has trademark registrations for DORINA, and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well known DORINA products and services. Complainant notes that it has no affiliation with Respondent. Complainant further contends that Respondent is using the Domain Name as a tool to exploit Complainant's reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name other than trademark infringement. Further, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant's rights. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. Complainant submitted its original Complaint in English. In its email dated October 19, 2023, and amended Complaint, Complainant submitted its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant submits that the English language should be the language for the current proceedings because the content of the website to which the Domain Name reverts was in English; the Domain Name is composed entirely of English characters and terms, such as "shop"; neither Complainant nor its representative are proficient in Chinese and the retention of a translator would add considerable costs to Complainant cause undue burden on Complainant and result in delay to the proceedings, and potentially putting Complainant and Internet users at a risk for a longer period. Complainant also noted that Respondent opted for a registrar located in Singapore, where the registrar's website primarily present information in English, and that the registration agreement is also available in English, thus indicating that Respondent is familiar with English, or would not be disadvantaged if the language of the proceeding is in English. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time, and costs. The Panel accepts Complainant's submissions regarding the language of the proceeding. The Panel also notes that the Domain Name does not have any specific meaning in the Chinese language, and that the Domain Name contains Complainant's DORINA trademark in its entirety, and the addition of the English term "shop" to Complainant's trademark in the Domain Name, all of which indicate that Respondent understands English. The Panel further notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding, nor did Respondent choose to file a Response in Chinese or English. page 4 The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and costeffective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that failure to respond to the complainant's contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the DORINA trademarks, as noted above under section 4. Complainant has also submitted evidence which supports that the DORINA trademarks are widely known and a distinctive identifier of Complainant's products and services. Complainant has therefore proven that it has the requisite rights in the DORINA trademarks. With Complainant's rights in the DORINA trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain ("TLD") in which it is registered (in this case is, ".com"), is identical or confusingly similar to Complainant's trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant's DORINA trademarks. The use of Complainant's trademark in its entirety, with the addition of the word "shop", does not prevent a finding of confusing similarity between the Domain Name and the DORINA trademark as it is recognizable in the Domain Name. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof page 5 always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its DORINA trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not an authorized reseller and is not related to Complainant. Respondent is also not known to be associated with the DORINA trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Domain Name initially reverted to a webpage that attempted to imitate Complainant's website and advertised Complainant's products. This website displayed the DORINA word mark, and duplicated Complainant's logo, copyrighted texts and images obtained from Complainant's website. The website the Domain Name initially reverted to had a similar look and feel to that of Complainant's website at , attempted to impersonate Complainant's website and offered DORINA-branded goods that Complainant sold, thus potentially misleading Internet users into thinking that the website has been authorized or operated by or affiliated with Complainant. At the time of the Decision, the Domain Name reverted to an error or inactive page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, the nature of the Domain Name, including Complainant's trademark and the term "shop" which refers to DORINA products purportedly offered for sale and reinforced its association with Complainant's business and products, is misleading and carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name, reinforcing the notion that Respondent was not using the Domain Name in connection with a bona fide offering. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent's actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or page 6 (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location." The Panel finds that Complainant has provided ample evidence to show that registration and use of the DORINA trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant's DORINA trademarks and related products and services are widely known and recognized. In addition, the addition of the term "shop" to Complainant's trademark in the Domain Name is directly related to Complainant's industry and business activities. Therefore, Respondent was aware of the DORINA trademarks when it registered the Domain Name, knew, or should have known that the Domain Name was confusingly similar to Complainant's trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Name incorporating Complainant's DORINA trademark in its entirety suggests Respondent's actual knowledge of Complainant's rights in the DORINA trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking for bona fide and well known DORINA products and services of Complainant or authorized partners of Complainant. In particular, the evidence provided by Complainant indicated that at the time of filing of the Complaint, the Domain Name initially reverted to a website which featured Complainant's DORINA word mark, duplicated Complainant's copyrighted images, texts, and DORINA-branded products, purportedly offered products, that is, DORINA-branded clothes, which are impersonating Complainant's business activities. The use of the DORINA mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant's products and services. Therefore, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's webpage by creating a likelihood of confusion with Complainant's DORINA marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainant had further indicated that the Domain Name also had active MX records, indicating that Respondent can send emails through the email address "[.]@dorinashop.com", which may result in sending of fraudulent messages containing spam, or phishing attempts. Moreover, on September 6, 2023, an employee of Complainant and President of Complainant's United States subsidiary, made a purchase of a purported DORINA-brand item from the website linked to the Domain Name. Payment was processed but the employee did not receive an order or shipping confirmation, and did not receive the goods he ordered and paid for. His attempts to contact the website have gone unanswered. At the time of the Decision, the Domain Name resolves to an error or inactive page. Such use does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. In addition, all these actions may result in tarnishing Complainant's reputation and good will in the industry. Further, the Panel also notes the failure of Respondent to submit a Response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Name may be put. page 7 Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of 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 Domain Name be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: December 7, 2023
Full & Egal Universal Law Academy