ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Asian World of Martial Arts, Inc. v. Min Feng Case No. D2024-2184 1. The Parties The Complainant is Asian World of Martial Arts, Inc., United States of America (“United States”), represented by Caesar Rivise, PC, United States. The Respondent is Min Feng, China. 2. The Domain Name and Registrar The disputed domain name
(the “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 May 28, 2024. On May 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2024, 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 June 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2024. The Center appointed Nicholas Smith as the sole panelist in this matter on July 3, 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.
page 2 4. Factual Background The Complainant is a manufacturer and distributor of sporting goods equipment, specialising in equipment for human contact sports. Since 1994, it has offered its products under the trademark PROFORCE (the “PROFORCE Mark”) mark and other marks containing the word “proforce”. The Complainant has registered the PROFORCE Mark as a trademark in the United States for goods in class 25 (e.g., Registration Number 5,068,204, registered October 25, 2016) and in China for goods in class 25 (e.g., Registration Number 5787236, registered on January 7, 2010). The Domain Name was registered on August 5, 2022. The Domain Name resolves to a website (“the Respondent’s Website”) that purports to offer the Complainant’s martial arts clothing and equipment or counterfeit versions of the Complainant’s martial arts clothing and equipment under the Complainant’s PROFORCE Mark. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: a) the Complainant is the owner of the PROFORCE Mark, having registered the PROFORCE Mark in the United States. The Domain Name is confusingly similar to the PROFORCE Mark as it reproduces the PROFORCE Mark and add the descriptive terms “ma” (an obvious abbreviation for “martial arts”) and “sale” and a Top-Level Domain (“TLD”) which do not distinguish the Domain Name from the PROFORCE Mark. b) there are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to create a website that sells counterfeit or unathorised versions of the Complainant’s products. The Respondent’s Website also includes copyrighted photos and product descriptions of the Complainant’s martial arts clothing and equipment taken from the Complainant’s official website. c) The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website that reproduces the Complainant’s copyrighted material, and purports to represent the Complainant, the Respondent is clearly aware of the PROFORCE Mark and is using it to deceive consumers as to its affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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
page 3 the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 of the mark is reproduced within the Domain Name. Accordingly, the 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 terms here, “ma sale” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the 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. 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 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 Domain Name such as those enumerated in the Policy or otherwise. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name. The Respondent has used the Domain Name to operate a website to sell martial arts clothing and equipment that purport to be legitimate PROFORCE products. The Complainant submits that such material is likely to be counterfeit as the Respondent is not an authorized distributor of the Complainant or connected with the Complainant in any way. If the martial arts clothing and equipment sold on the Respondent’s Website are not genuine products produced by the Complainant, the Respondent’s use of the Domain Name does not
page 4 grant it rights or legitimate interests since it is using the Complainant’s PROFORCE Mark for a site selling counterfeit products. Even if the Respondent is offering genuine PROFORCE products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data test”). The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner: “… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The “Oki Data test” does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its reproduction of the Complainant’s official product images and product descriptions and the absence of a disclaimer or any explanation as to the identity of the operator of the Respondent’s Website results in the impression that the Respondent’s Website is an official website of the Complainant. Under the circumstances of this case, even in the event that the Respondent is reselling genuine PROFORCE products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name. 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. The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s PROFORCE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s Website. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either the Complainant’s products or counterfeit versions of the Complainant’s products. The Respondent is using a Domain Name that is confusingly similar to the PROFORCE Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test.
page 5 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 Domain Name be transferred to the Complainant. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: July 14, 2024
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