ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 13 Scents Inc. v. 魏建东 (JianDong Wei) Case No. D2024-4235 1. The Parties The Complainant is 13 Scents Inc., United States of America (“USA”), represented by Wilmer Cutler Pickering Hale and Dorr LLP, USA. The Respondent is 魏建东 (JianDong Wei), China. 2. The Domain Names and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2024. On October 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 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 (Chengdu West Dimension Digital Technology Co., Ltd. DBA west.cn) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 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 in English on October 18, 2024. 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. On the same day, the Complainant requested English to be the language of the proceeding. 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”).
Page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on October 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2024. The Center appointed Andrew Sim as the sole panelist in this matter on November 20, 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 a Delaware corporation headquartered in New York City, USA. The Complainant is a perfume house offering perfume products and scented home goods. The Complainant has spent roughly USD 65 million in sales and marketing for its perfume products and scented goods, and has had revenues in excess of this amount. The Complainant holds registered trademarks for DOSSIER (the “DOSSIER Trademark”) in various jurisdictions. The Complainant has provided copies of the registration certificates for two USA trademarks, and has claimed that it also holds registered trademarks for DOSSIER in other jurisdictions including the European Union. Jurisdiction Mark Registration Number Registration Date Class(es) Covered Status USA DOSSIER 6008897 March 10, 2020 3 Registered DOSSIER 6629520 January 25, 2022 4 Registered The Complainant operates a number of domain names associated with the DOSSIER Trademark. For example, the Complainant owns and maintains the primary domain name since January 2019. The domain name redirects to the global official website of the Complainant (i.e., “dossier.co”) (the “Global Website”), which displays information about the Complainant’s businesses, offerings, and promotional and other corporate material, and has the options to switch to its websites in other countries. The Complainant also operates other domain names containing the DOSSIER Trademark, followed by a country code Top-Level Domain (“ccTLD”), for example , , , and . These domain names redirect to the corresponding country-specific website of the Complainant, for example redirects to the Mexican website of the Complainant (i.e., “www.dossier.mx”), which displays similar contents as the Global Website in Spanish and has the options to switch to the Complainant’s other country-specific websites. The Disputed Domain Name was registered on March 5, 2024. Based on the Complainant’s evidence, upon entering “dossierus.com”, it resolves to a website that is very similar to the Global Website in terms of page layout, colour scheme, design style, and product offerings. The DOSSIER Trademark is also featured prominently at the top of the website. The names and contact information given in the website’s Terms of Use and Contact Us pages refer to Complainant by “13 Scents Inc., DBA Dossier” and provide an email address associated with the Complainant’s primary domain name. Upon the Panel’s own visit to the Disputed Domain Name through Microsoft Edge, the Microsoft Defender SmartScreen function prevented the Panel’s access and displayed the following warning – “This site has been reported as unsafe […] Microsoft recommends you don't continue to this site. It has been reported to Microsoft for containing phishing threats which may try to steal personal or financial information”.
Page 3 Little information is known about the Respondent. Available information provided by the Registrar covers only the registrant’s name, postal address, telephone number, fax number, and email address. 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. First, the Complainant contends that the Disputed Domain Name is identical and/or confusingly similar to the Complainant’s DOSSIER Trademark, as it incorporates the entirety of the DOSSIER Trademark. The only difference between the Complainant’s DOSSIER Trademark and the Disputed Domain Name is the insertion of the geographic description “us” to the end, to mimic the Complainant’s usual practice of adding a ccTLD to the DOSSIER Trademark to create a country-specific domain name. Second, the Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name was registered after the Complainant established rights in the DOSSIER Trademark. The Respondent is not commonly known by the Disputed Domain Name, and its sole use of the Disputed Domain Name has been to divert potential consumers from the Complainant and its legitimate websites. Third, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant references several prior WIPO UDRP cases involving individuals with identical names to the Respondent, in which decisions were rendered against those individuals, seeking to demonstrate that the Respondent is a serial registrant of domain names that incorporate third-party trademarks. The Complainant contends that the Respondent must have knowledge of the Complainant (and its goods), considering the nature of the Disptued Domain Name and the mirror-image content accessible at the Disputed Domain Name. Further, the Respondent has had multiple years of constructive notice of the Complainant’s DOSSIER Trademark under USA law (15 U.S.C. § 1072), with the relevant statutory provision reads “Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof.” Bad faith is also demonstrated by the prominent display of the DOSSIER Trademark and perfumes identical to those sold by the Complainant at a discounted price at the Disputed Domain Name. The Respondent intentionally attempts to attract potential consumers to Respondent’s website by creating a likelihood of confusion with Complainant’s DOSSIER Trademark. The Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: 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.
Page 4 The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including: (a) The Disputed Domain Name is in the English language and incorporates Latin characters, indicating that the Respondent has a certain degree of understanding of English; (b) The Disputed Domain Name expressly refers to “us”, which means the USA, in which English is the most widely used language; (c) The Respondent chose a “.com” TLD instead of a China-specific TLD to draw English-speaking consumers; (d) The Disputed Domain Name website contains information and content solely in the English language; (e) The content of the Disputed Domain Name website is intended to create the false impression that it is affiliated with or sponsored by the Complainant, being a company in the USA; and (f) The Complainant has no knowledge of Chinese, and considerable translation costs would be incurred if the proceedings were to be in Chinese. The Respondent did not make any submissions with respect to the language of the proceeding. This is despite the fact that the Center had sent the notification of the Complaint which includes instructions on the language of the proceeding to the Respondent in both Chinese and English. 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. 6.2 Substantive Issues Paragraph 4(a) of the Policy states that, in an administrative proceeding, the Complainant must prove each of the following three elements: (a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (c) the Disputed Domain Name has been registered and is being using in bad faith. For the below reasons, support for the Complaint can be found due to the satisfaction of the three conditions for the Disputed Domain Name. 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 trademarks and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.
Page 5 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 DOSSIER Trademark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical and/or confusingly similar to the DOSSIER Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of the term “us”, following the DOSSIER Trademark 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 DOSSIER Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s DOSSIER Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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. 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. From the overall appearance of the Disputed Domain Name website as described in section 4 above, the Panel finds that it is intended to be an impersonation of the Complainant’s legitimate websites, particularly the Global Website. According to previous UDRP decisions, the use of a domain name for illegitimate and/or illegal activity, such as impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Particularly in regards to the three illustrative examples of legitimate interests in paragraph 4(c) of the Policy, the Panel finds that: (i) the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and services, as it displays a copycat website impersonating the Global Website, offering the Complainant’s products bearing the DOSSIER Trademark instead of any original products offered by the Respondent; (ii) the Disputed Domain Name does not correspond with the Respondent’s name (i.e., “JianDong Wei”) in English or Chinese, and there is no evidence of the Respondent operating any business or organization with similar name as the Disputed Domain Name; and
Page 6 (iii) the Respondent’s use of the Disputed Domain Name does not fall within the scope of legitimate noncommercial or fair use, as the Disputed Domain Name website clearly has the effect of misleadingly diverting customers from the Global Website. The Panel also finds that the Respondent has no rights or legitimate interests to use the Complainant’s DOSSIER Trademark. 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 finds that the circumstances of registering and using the Disputed Domain Name clearly demonstrate the Respondent’s bad faith and have constituted the situation as specified in paragraph 4(b)(iv) of the Policy: (a) The Complainant’s DOSSIER Trademark was registered in the USA (at which the Disputed Domain Name is intended to target, based on the insertion of the term “us” and content of the website at the Disputed Domain Name) before the Respondent’s registration of the Disputed Domain Name which is confusingly similar to the Complainant’s DOSSIER Trademark, and also similar to its primary domain name ; (b) The Respondent has shown a pattern of trademark hoarding conduct, including: I. La Roche-Posay Laboratoire Pharmaceutique v. 魏建东 (JianDong Wei), WIPO Case No. D2024-1352; II. Peter Thomas Roth Labs LLC v. 魏建东 (JianDong Wei), WIPO Case No. D2024-1482; III. Hydrojug, Inc. v. 魏建东 (Wei Jian Dong), WIPO Case No. D2024-3385; and IV. Hydrojug, Inc. v. 魏建东 (JianDong Wei), WIPO Case No. D2024-3386; (c) Although there is no definite proof that the “魏建东 (JianDong Wei)” / “魏建东 (Wei Jian Dong)” in the above cases was/were the same person as the Respondent and noting the possibility of coincidences, in view of the similarity of the nature and modus operandi of the conducts in the above cases and the present proceedings (e.g., the domain names involved in D2024-1352 and D2024-1482 were combinations of a third-party trademark and “us.com”, most of the copycat websites involved were offering for sale products at discounted prices, etc.), and the fact that the domain names in D2024-1352, D2024-1482, and D2024-3386 were registered with the Registrar, the Panel finds, on the balance of probabilities, that the Respondent is the same person as the “魏建东 (JianDong Wei)” / “魏建东 (Wei Jian Dong)” in the above cases; (d) Based on the content of the website at the Disputed Domain Name, the Panel finds that the Respondent must have had actual knowledge of the Complainant (and the DOSSIER Trademark) at the time of registering the Disputed Domain Name; (e) As earlier found in section 6.2 above that the Disputed Domain Name website is intended to be an impersonation of the Global Website, bad faith is manifestly apparent. WIPO Overview 3.0, section 3.1.4; (f) According to previous UDRP decisions, using the Disputed Domain Name to host a copycat version of the Complainant’s Global Website may constitute bad faith. WIPO Overview 3.0, section 3.4; and (g) There is no reasonable connection or association between the Respondent and the Disputed Domain Name.
Page 7 Inference of bad faith is also drawn in accordance with paragraph 14(b) of the Rules for the Respondent’s failure to file a response as required in paragraph 5(a) of the Rules in the absence of exceptional circumstances. 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. /Andrew Sim/ Andrew Sim Sole Panelist Date: December 3, 2024
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