ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Simpson Strong-Tie Company Inc. v. Yang Xinfeng Case No. D2024-1645 1. The Parties The Complainant is Simpson Strong-Tie Company Inc., United States of America, represented by Shartsis Friese LLP, United States of America. The Respondent is Yang Xinfeng, China. 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2024. On April 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2024, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2024, 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 informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. The Complainant filed an amended Complaint on April 25, 2024, including a request for English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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 Chinese and English of the Complaint, and the proceedings commenced on May 2, 2024. In accordance with the
page 2 Rules, paragraph 5, the due date for Response was May 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2024. The Center appointed Jacob Changjie Chen as the sole panelist in this matter on May 27, 2024. 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 is one of the largest suppliers of structural building products in the world. Since the 1980s, the Complainant has used its house mark SIMPSON STRONG-TIE in connection with structural connectors, fasteners, power tools, epoxies, and related products and services. The Complainant owns No. 801188 STRONG-TIE trademark, registered in the United States of America on January 4, 1966. The Complainant also owns several SIMPSON STRONG-TIE trademarks, including No. 1833650 and No. 3609240, the United States of America trademarks, respectively registered on May 3, 1994, and on April 21, 2009. The Complainant also owns the domain name incorporating its STRONG-TIE trademark, , registered on July 29, 1995, and has been resolving the domain name as its official website. According to the information disclosed by the Registrar, the Respondent is Yang Xinfeng, located in China. The disputed domain name was registered on October 7, 2022, and resolves to a website boldly displaying the Complainant’s SIMPSON STRONG-TIE trademark and purportedly offering products relating to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its company name, website, and primary brand, which are protected by multiple registered trademarks. The disputed domain name itself uses the last two words in the Complainant’s business name and is identical in part to many of the Complainant’s federally registered trademarks. The additional descriptive term “shop” does not distinguish the disputed domain name from the Complainant’s trademarks. Thus, the disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has no relationship with and no authorization by the Complainant. Furthermore, the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Respondent resolves the disputed domain name to a website displaying the Complainant’s trademark and purportedly offering products relating to the Complainant and the website associated with the disputed domain name is similar to the Complainant’s official website, which means that the Respondent has intention to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion
page 3 with the Complainant’s trademark and the Complainant as to the source, sponsorship, affiliation, or endorsement of his website or location. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that 1) the Complainant is unable to communicate in Chinese, and using Chinese as language of the proceeding would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; 2) the disputed domain name is comprised of Latin characters and English words, and the content at the website associated with the disputed domain name is in English, indicating that the Respondent is able to understand English. The Respondent did not make any specific submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety STRONG-TIE trademark is reproduced within the disputed domain name with only the deletion of the hyphen mark “-” between “strong” and “tie” in the Complainant’s trademark. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other term “shop” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The disputed domain name resolves to a website boldly displaying the Complainant’s SIMPSON STRONG-TIE trademark and purportedly offering products relating to the Complainant. Such use of the disputed domain name cannot be deemed as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In addition, the nature of the disputed domain name, comprising the Complainant’s STRONG-TIE trademark (with only deletion of the hyphen mark “-”) and the additional term “shop”, is inherently misleading, and carries a risk of implied affiliation. Such composition of the disputed domain name does not support a finding of any rights or legitimate interests on the Respondent. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the disputed domain name was registered far after the Complainant’s first registration of the STRONG-TIE trademark. According to the Complainant’s evidence, the Panel accepts that the Complainant and its STRONG-TIE trademark have gained a certain degree of reputation and recognition among relevant consumers worldwide. Thus, the Panel views that the Respondent should have been aware of the Complainant and the STRONG-TIE trademark. In addition, the Respondent resolves the disputed domain name to a website boldly displaying the Complainant’s SIMPSON STRONG-TIE trademark and purportedly offering products relating to the Complainant, which could prove that the Respondent has actual knowledge of the Complainant and its trademarks at the time of registering the disputed domain name. The Respondent boldly displays the SIMPSON STRONG-TIE trademark and purportedly offers products relating to the Complainant on the website associated with the disputed domain name. The Panel views that the Respondent has intention to cause confusion to Internet users that he has relationship with the Complainant and its trademarks and gain commercial benefits therefrom. Thus, the Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating likelihood of confusion with the Complainant and its trademarks as to the source, sponsorship, affiliation, or endorsement of his website or location or products and services.
page 5 Given all the circumstances of the case, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds that the Complainant has established the third element 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 name be transferred to the Complainant. /Jacob Changjie Chen/ Jacob Changjie Chen Sole Panelist Date: June 9, 2024
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