ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Hong Kong Sun Rise Trading Limited v. Name Reacted Case No. D2024-2727 1. The Parties The Complainant is Hong Kong Sun Rise Trading Limited, Hong Kong, China, represented by Abion AB, Sweden. The Respondent is Name Redacted. 2. The Domain Name and Registrar The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2024. On July 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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 (PERFECT PRIVACY, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2024. 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 of the Complaint, and the proceedings commenced on July 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2024. The proceedings were suspended on July 18, 2024 and reinstituted on August 27, 2024.
page 2 The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 24, 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. The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel orders that the Respondent’s name be redacted from this decision. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. 4. Factual Background The Complainant is headquartered in Hong Kong, China, and it operates internationally as a distributor of industrial machinery and equipment in association with the GREENWORKS brand. It has protected its intellectual property rights gained through developing and marketing its line of products and services, including equipment for home and garden maintenance. The Complainant has used the GREENWORKS mark in commerce for more than 14 years and owns the following registrations among an international portfolio: - GREENWORKS, United States Registration No. 3,851,110, dated September 21, 2010, in Class 7; and - GREENWORKS, United States Registration No. 6,890,998, dated November 1, 2022, in Class 9, Class 11. The Complainant also owns trademark registrations for other GREENWORKS-formative marks in the United States, and elsewhere. In addition, the Complainant owns and uses the domain name to host its principal commercial website. The disputed domain name was registered on April 21, 2024, under a false name and contacts, and it resolves to a copycat website which is modelled on the Complainant’s website identified above. 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 disputed domain name. Notably, the Complainant contends that its trademark is well-known due to the widespread adoption of its products and services. The Complainant relies on compelling evidence of bad faith, establishing identity theft by the Respondent and the use of a fake website with the look and feel of the Complainant’s principal website, including images of GREENWORKS products at discounted prices. In the circumstances, the Complainant urges the Panel to find deliberate targeting of the GREENWORKS mark for improper purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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 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 GREENWORKS mark has been reproduced by the Respondent and the Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel notes that the disputed domain name contains, in addition to the Complainant’s GREENWORKS mark, the term “82V” after the Complainant’s entire mark. Although the addition of other terms (here, “82V”) 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. 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. In particular, the Complainant has provided evidence and submissions to the effect that the Respondent has never been affiliated with or licensed by the Complainant to use the GREENWORKS mark in any manner including as part of a domain name. The record shows that the Respondent has engaged in identity theft, in adopting third-party personal and business names for domain name registration details, and that the Respondent is using the disputed domain name to host a copycat website, replete with images of GREENWORKS branded
page 4 products. The Complainant has found evidence of consumer complaints about the fake website, including reports of purchased goods failing to arrive. Panels have held that the use of a domain name for illegal activity (here, impersonation, passing off, and other types of fraud, such as identity theft) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. 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 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Panels have also held that the use of a domain name for illegal activity (here, impersonation, passing off, and other types of fraud, such as identity theft), will constitute bad faith. WIPO Overview 3.0, section 3.4. The Panel views the Respondent’s conduct in this case as a prime example of bad faith, in light of the following circumstances: (1) the misappropriation of the identity of an individual related to an actual reseller of the Complainant’s products to secure the registration of the disputed domain name; (2) the unauthorized use of that reseller’s corporate name and logo on the Respondent’s website to deceive customers; and (3) the operation of a fake website featuring images of the Complainant’s goods to induce fraudulent sales of what appear to be non-existent products. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. 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. /Christopher J. Pibus/ Christopher J. Pibus Sole Panelist Date: October 3, 2024
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