ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION BJ’s Wholesale Club, Inc. v. xiaofei chen Case No. D2025-3812 1. The Parties The Complainant is BJ’s Wholesale Club, Inc., United States of America (“U.S.”), represented by Nelson Mullins Riley & Scarborough LLP, U.S. The Respondent is xiaofei chen, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2025. On September 19, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2025, 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 (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2025, 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 September 22, 2025. 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 September 26, 2025. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2025
page 2 The Center appointed Jonathan Agmon as the sole panelist in this matter on October 22, 2025. 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 claims it is a leading operator of membership warehouse clubs primarily on the eastern half of the U.S. founded in the mid-1980s, the Complainant provides an assortment of groceries, fresh foods, general merchandise, gasoline, and other ancillary services which is enhanced by the Complainant’s digital capabilities. Since its founding, the Complainant has expanded its footprint in the U.S. to include 250 large-format high volume warehouse clubs and 186 gasoline stations in 21 states. The Complainant’s members can also shop online through the Complainant’s website or its mobile app. The Complainant owns various service mark registrations, including the following: - U.S. service mark registration no. 1643993 for BJ’S WHOLESALE CLUB, registered on May 7, 1991; and - U.S. service mark registration no. 1751720 for BJ’S, registered on February 9, 1993; and - U.S. service mark registration no. 2910211 for , registered on December 14, 2004. (collectively, the “BJ’S Marks”) The Complainant claims it owns and operates its official domain name, , registered on April 12, 1997. The disputed domain name was registered on September 8, 2025, and at the time of filing of the Complainant, resolved to a website claiming to be operated by BJ’s Wholesales, offering “the convenience of wholesale shopping” and displaying the Complainant’s BJ’s trademark. 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: - The disputed domain name is confusingly similar to the BJ’s Marks in which the Complainant has rights. The Complainant obtained common law rights to the BJ’s Marks dating back to 1984, and federal trademark registration rights in 1991, long before the Respondent registered the disputed domain name. The disputed domain name comprises of the Complainant’s BJ’S WHOLESALE CLUB trademark with the deletion of term “club”, and the addition of the letter “s”. The deletion and omission of “club” and the letter “s” respectively does not distinguish or differentiate the disputed domain name from creating a likelihood of confusion with the BJ’s Marks. Internet users are likely to recognize the Complainant’s mark in the disputed domain name and are likely to be confused as to the source and ownership of the disputed domain name. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the BJ’S Marks, and there is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant has not authorised or licensed the Respondent to use the BJ’S Marks. The fact that the disputed domain name is confusingly similar to the
page 3 BJ’S Marks carries a high risk of implied affiliation and would not support a finding that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent is also not making legitimate noncommercial or fair use, or using, or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name in furtherance of the illegal activity of impersonation/passing off and possibly harvesting personal information under false pretenses can never confer rights or legitimate interests on the Respondent. - The disputed domain name was registered and is being used in bad faith. The Complainant has used the highly distinctive and well-known BJ’S Marks in commerce for the past 41 years and there is no legitimate reason that the Respondent has for registering the disputed domain name other than specifically targeting the Complainant. This amounts to registration in bad faith. There is no question that the Respondent clearly knew of the Complainant when he registered the disputed domain name, as is evident from the Respondent’s use of the disputed domain name and the Respondent’s website to impersonate the Complainant. The Respondent’s use of the disputed domain name in furtherance of illegal activities is evidence of bad faith registration and use of the disputed domain name. The Respondent’s impersonation of the Complainant and representation that the Respondent’s website is an official site, or an officially affiliated site of the Complainant is clearly 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 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 Complainant’s BJ’S WHOLESALE CLUB mark is recognizable within the disputed domain name, as its dominant element is reproduced. 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 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.
page 4 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. There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant’s registration of its BJ’S Marks long predates the registration of the disputed domain name. The “Contact Us” page of the Respondent’s website contains an email submission form that encourages Internet users to “subscribe to get a discount”. This could be an attempt at harvesting contact information of Internet users. Panels have held that the use of a domain name for illegitimate activity and/or illegal activity, here, claimed as applicable to this case: phishing, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel is of the view that there is no evidence that the Respondent is using or preparing to use the disputed domain name for any legitimate purpose. 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 Respondent registered the disputed domain name long after the Complainant registered its BJ’S Marks. Moreover, the disputed domain name resolves to a website claiming to be operated by BJ’s Wholesales, displaying the Complainant’s BJ’S Marks, including the BJ’S stylized trademark in a different colour scheme. The Respondent’s use of the Complainant’s stylized trademark is clear evidence that the Respondent was targeting the Complainant and its trademarks. Panels have held that the use of a domain name for illegitimate activity and/or illegal activity, here, claimed as applicable to this case: phishing, impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. 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 notes that the Respondent provided false or incomplete contact details that prevented the courier from delivering the Center’s written communication and draws an adverse inference accordingly. 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. /Jonathan Agmon/ Jonathan Agmon Sole Panelist Date: November 4, 2025
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