ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SawStop, LLC v. Ye Li Case No. DNL2024-0021 1. The Parties The Complainant is SawStop, LLC, United States of America, represented by TraskBritt, P.C., United States of America. The registrant of the disputed domain name is Ye Li, China, (the “Respondent”). 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with SIDN through Domain Robot. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2024. On April 18, 2024, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On April 19, 2024, SIDN 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2024, providing the information disclosed by SIDN, and inviting the Complainant to amend the Complaint in this light. The Complainant filed an amended Complaint on April 23, 2024. The Center verified that the Complaint as amended satisfies the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on April 24, 2024. In accordance with the Regulations, article 7.1, the due date for Response was May 14, 2024. The Center did not receive any response. Accordingly, the Center notified the Respondent’s default on May 15, 2024.
page 2 The Center appointed Rogier de Vrey as the panelist in this matter on May 23, 2024. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The Complainant is owner of various trademarks, including the European Union trademark with registration number 017979811 registered on March 6, 2019, as depicted below (the “Mark”): According to the Complainant, the SAWSTOP marks were first used to sell goods in commerce by SawStop at least as early as August 22, 2002, and SawStop continues to exclusively sell goods using the SAWSTOP marks. SawStop has spent significant time and money promoting products using the SAWSTOP marks, including, but not limited to, woodworking tools, namely, table saws, safety systems for woodworking machines, and associated accessories. The Center was informed by SIDN that the Disputed Domain Name was registered by the Respondent on February 13, 2024. The Disputed Domain Name resolves to a webpage that appears to be parked, owned by a third party, and is for sale at a price of USD 9,300. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is identical to and incorporates the entirety of the distinctive and dominant textual component of the Complainant’s mark and that no additional distinctive elements are included in the Disputed Domain Name. The Mark comprises the term “SAWSTOP” prominently displayed in front of additional design elements and the alpha-numeric components of the Disputed Domain Name are identical to the textual components of the Mark. The suffix ‘’.nl’’ of the Top-Level Domain should be disregarded when carrying out the confusing similarity test. The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent: - does not have any (intellectual property) rights in the Disputed Domain Name; - has not made any bona fide use of the Disputed Domain Name in connection with an offering of goods or services nor any demonstrable preparations to so use the Disputed Domain Name; - is not commonly known by the Disputed Domain Name; and - is not making a legitimate noncommercial or fair use of the Disputed Domain Name. As underwriting facts and circumstances the Complainant puts forward that the Respondent does not have any (intellectual property) rights in the Disputed Domain Name, that the Disputed Domain Name is parked and resolves to a third party-owned webpage displaying the message “The domain sawstop.nl is for sale!”, there are no facts and circumstances which indicate that the Respondent has a bona fide use of the Disputed Domain Name in connection with an offering of goods or services because the Disputed Domain Name does not resolve to an active webpage but instead redirects to a marketplace where the Disputed Domain Name is being offered for sale.
page 3 In addition, the Complainant asserts that the Respondent registered the Disputed Domain Name in bad faith. At the time of registration of the Disputed Domain Name the Respondent should have been aware of and have known the Complainant’s mark and the fact the registration of the Disputed Domain Name would constitute an infringement on the Complainant’s trademark rights. Furthermore, the parking page where the message “The domain sawstop.nl is for sale!” is being shown and the fact that the Disputed Domain Name is for sale for USD 9,300, a price which must exceed the Respondent’s registration fees and reasonable out-of-pocket expenses, underwrite the Respondent’s bad faith registration and use of the Disputed Domain Name and its intention to unfairly profit from the Complainant’s mark. Finally, the Complainant points out that the Respondent appears to have been involved in numerous domain name disputes resulting in transfer of the domain name in question away from the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established the requirement of article 2.1(a) of the Regulations. As the Complainant points out the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and that cases decided under both the Regulations and the UDRP are relevant in cases involving domain names with the country-code Top-Level Domain for the Netherlands (“.nl”) (see, e.g., Pack & Co. S.P.R.L, and Sadig ALAKBAROV v. Rens Fritsen, WIPO Case No. DNL2023-0016, AGC Green-Tech Co., Ltd. v. Domains By Proxy, LLC, WIPO Case No. DNL2022-0024 and Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050) The Complainant is owner of the Mark which is a European Union trademark. The Complainant therefore enjoys trademark protection under Dutch (Benelux) law. The Complainant’s Mark is a figurative mark with design elements and prominently displays the textual elements of the Mark, SAWSTOP. According to section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), trademark registrations with design elements are capable of prima facie satisfying the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. To the extent that any design elements are incapable of representation in domain names, these elements are largely disregarded unless, for example, a disputed domain name comprises a spelled-out form of the relevant design element. Furthermore, the Panel finds that the dominant portion of the Mark is made out of the term “SAWSTOP” meaning that this is the element that needs to be taken into account in the confusing similarity test. Finally, according to section 1.11 of the WIPO Overview 3.0 the country-code Top-Level Domain is disregarded under the confusing similarity test. Considering the above, the Panel finds that in this case the assessment of confusing similarity comparing the Disputed Domain Name and the textual component of the Mark (“SAWSTOP”) leads to the conclusion that the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests The Panel finds that the Complainant has established the requirement of article 2.1(b) of the Regulations. To establish this second requirement the Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in a domain name. Since, generally speaking, proving that a respondent lacks rights or legitimate interests in a domain name may lead to the difficult if not impossible
page 4 task of proving negative circumstances, it is sufficient for the complainant to show prima facie evidence the respondent lacks rights or legitimate interests in a domain name to shift the burden of production to the respondent (section 2.1 of the WIPO Overview 3.0). The Respondent has not filed a reply to the Complainant’s contentions and thus has not rebutted the Complainant’s contentions. The evidence submitted by the Complainant shows that the Respondent is not making any bona fide use of the Disputed Domain Name in connection with an offering of goods or services nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Disputed Domain Name leads to a webpage of a third party (named “Sedo”) on which the Disputed Domain Name is being offered for sale for an amount of USD 9,300. While prior panels have accepted that aggregating and holding domain names consisting of acronyms, dictionary words, or common phrases (for resale) can be bona fide, the Disputed Domain Name consists of the distinctive term SAWSTOP, which at least according to the evidence presented appears to stand for nothing else except for the Complainant’s mark. Furthermore, based on the record presented, the Panel finds that the Respondent is not affiliated with the Complainant in any way and the Complainant has also not licensed or otherwise permitted the Respondent to use the Mark. Therefore, the Panel finds that there is no evidence and there are no indications that the Respondent has rights or legitimate interests in the Disputed Domain Name. C. Registered or Used in Bad Faith In light of the Complainant’s contentions supported by the evidence submitted by the Complainant, the Panel finds that the Complainant has established the requirement of article 2.1(c) of the Regulations. At the time of registration of the Disputed Domain Name the Mark was already registered and well known for quite some time. Therefore, the Respondent must have been aware of the Mark at the time it registered the Disputed Domain Name. The apparent lack of any good faith attempt to ascertain whether the Respondent was registering and using a third-party trademark, such as by conducting online searches, supports a finding of bad faith. In addition, the Panel finds that the redirection to a third party webpage on which the Disputed Domain Name is being offered for sale for an amount of USD 9,300 strongly suggests that, absent any evidence from the Respondent to the contrary, the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting or transferring it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s costs directly related to the Disputed Domain Name (see Yves Saint Laurent Parfums v. Zhao Ke, WIPO Case. No. DNL2022-0020). Finally, the Panel points out that the Respondent has been a respondent in several previous domain name proceedings resulting in a transfer of the domain name in question away from the Respondent as the Respondent, in a manner similar to the present proceedings, registered domain names containing (well-known) trademarks to then almost instantly offered these for sale (Natixis v. Ye Li, WIPO Case No. DNL2022-0013, CrowdStrike, Inc. v. Ye Li, WIPO Case No. DNL2022-0033, Gianni Versace S.rl. v. Ye Li, WIPO Case No. DMX2022-0028, Z&V v. Ye Li, WIPO Case No. DNL2022-0048). The Respondent has thus engaged in a pattern of bad faith registrations. Therefore, the Panel finds that the Complainant has provided sufficient evidence of bad faith registration and bad faith use by the Respondent, as set out in article 3.2(b) and (d) of the Regulations.
page 5 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Disputed Domain Name be transferred to the Complainant. /Rogier de Vrey/ Rogier de Vrey Panelist Date: June 6, 2024
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