ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Wonderfold Corporation v. cui Huanrui Case No. D2024-3189 1. The Parties Complainant is Wonderfold Corporation, United States of America (“United States”), represented by Law Offices of Niria M. Arvizu, United States. Respondent is cui Huanrui, China. 2. The Domain Name and Registrar The disputed domain name is registered with OnlineNic, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2024. On August 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2024, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on August 6, 2024, 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 on August 6, 2024. 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 of the Complaint, and the proceedings commenced on August 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2024. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 17, 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 Complainant is a company organized under the laws of the United States that is active in the baby stroller business. Complainant has provided evidence of its ownership in various trademarks relating to its company name and brand WONDERFOLD, including, but not limited to, the following: - word mark WONDERFOLD, United States Patent and Trademark Office (“USPTO”), registration number: 5,956,667, registration date: January 7, 2020, status: active; - word mark WONDERFOLD, USPTO, registration number: 5,977,081, registration date: February 4, 2020, status: active. Moreover, Complainant has evidenced to own since 2002 the domain name which resolves to Complainant’s official website at “www.wonderfold.com”, used to promote Complainant’s products and related services in the baby stroller industry. Respondent, according to the WhoIs information for the disputed domain name, is located in China. The disputed domain name was registered on March 2, 2024. It resolves to a website at “www.wonderfoldshop.com” which is at least virtually identical to Complainant’s official website by copying its design, layout, photos, menus, links, and product pictures, thereby prominently displaying Complainant’s WONDERFOLD trademark and company information, and also offering for sale unauthorized imitations of Complainant’s products. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that, since its formation in 2019, it has invested substantial time, effort and financial resources in creating, developing and promoting its WONDERFOLD trademark, which is meanwhile well-known and famous, enjoying even unsolicited media coverage by e.g., international celebrities. Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s WONDERFOLD trademark as it incorporates the latter in its entirety, merely added by the descriptive word “shop”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has not been authorized by Complainant to register or use the disputed domain name nor is Respondent affiliated to Complainant in any way, (2) the disputed domain name contains the exact word, “Wonderfold”, which is the exact wording of Complainant’s registered WONDERFOLD trademark, (3) the website under the disputed domain name is identical or virtually identical to Complainant’s official website, and (4) Respondent has not made any bona fide offering of goods or services under the disputed domain name, but rather appears to offer unauthorized imitations of Complainant’s WONDERFOLD goods. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) given the well-known status of Complainant’s WONDERFOLD trademark, and the exact copying of Complainant’s website, Respondent cannot credibly argue that it did not have knowledge of Complainant and the WONDERFOLD trademark at the time of registering the disputed domain name, (2) in addition, Respondent uses the disputed domain name to impersonate Complainant, and (3) Respondent obviously registered the disputed domain name in order to advertise knock-offs of Complainant’s WONDRFOLD goods and related services.
page 3 B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that 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. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, 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. Complainant has shown rights in respect of its WONDERFOLD trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Also, the entirety of such trademark is reproduced within the disputed domain name, simply added by the term “shop”. Accordingly, the disputed domain name is confusingly similar to Complainant’s WONDERFOLD for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel, therefore, holds the first element of the Policy has been established. B. Rights or Legitimate Interests Second, 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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.
page 4 In particular, Respondent has not been authorized to use Complainant’s WONDERFOLD trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the (invented) term “wonderfold” on its own. Quite to the contrary, the disputed domain name resolves to a website at “www.wonderfoldshop.com” which is at least virtually identical to Complainant’s official website by copying its design, layout, photos, menus, links, and product pictures, thereby prominently displaying Complainant’s WONDERFOLD trademark and company information, and also offering for sale unauthorized imitations of Complainant’s products. Such making use of the disputed domain name, therefore, neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy. Even if the products commercialized through the disputed domain name were not imitations but originals of Complainant’s WONDERFOLD products being resold, the so-called Oki Data principles would have required Respondent e.g., to accurately and prominently disclose on the website at the disputed domain name the nonexistent relationship between Respondent and Complainant as the WONDERFOLD trademark holder, which Respondent obviously did not. WIPO Overview 3.0, section 2.8. Finally, the Panel notes that this very website is a copycat of Complainant’s website. In this regard, panels have long held that the use of a domain name for illegal activity (here, Complainant’s impersonation/passing-off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel, therefore, finds the second element of the Policy has been established, too. C. Registered and Used in Bad Faith Third, 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 circumstances to this case leave no doubts that Respondent was fully aware of Complainant’s rights in its undisputedly distinctive and well-known WONDERFOLD trademark when registering the disputed domain name and that the latter is clearly directed thereto. Moreover, using the disputed domain name, which is at least confusingly similar to Complainant’s WONDERFOLD trademark, to run a website at “www.wonderfoldshop.com” which is at least virtually identical to Complainant’s official website by copying its design, layout, photos, menus, links, and products offered for sale, thereby prominently displaying Complainant’s WONDERFOLD trademark and company information, and also offering for sale unauthorized imitations of Complainant’s products, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s WONDERFOLD trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated August 15, 2024 could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding. The Panel, therefore, holds that Complainant has established the third element of the Policy, too.
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 Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: September 24, 2024
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