WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walters & Mason Retail, Inc. v. lin jing and ChenJia Xing
Case No. D2020-0406
1. The Parties
The Complainant is Walters & Mason Retail, Inc., United States of America (“U.S.”), represented by Venable, LLP, U.S.
The Respondents are lin jing, China (the “Respondent 1”) and ChenJia Xing, China (the “Respondent 2”).
2. The Domain Name and Registrar
The disputed domain names <altardstateoutlet.com> (the “Domain Name 1”) and <altardstatestore.com> (the “Domain Name 2”, collectively the “Domain Names”) are registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in relation to the Domain Name 1 was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name 1. On February 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name 1 which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2020 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 amendment to the Complaint in English on February 21, 2020.
On February 21, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on February 21, 2020. The Respondent 1 did not comment on the language of the proceeding.
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 the Respondent 1 in English and Chinese of the Complaint, and the proceedings commenced on March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Respondent 1 did not submit any response. Accordingly, the Center notified the Respondent 1’s default on March 25, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on April 3, 2020. 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.
On April 17, 2020, the Complainant filed an unsolicited supplemental filing requesting that the Domain Name 2 be included to the Complaint. The supplemental filing was transmitted to the Panel on April 20, 2020. On May 1, 2020, at the request of the Panel, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name 2. On May 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name 2 which differed from the Respondent 1. On May 5, 2020, a Panel Order was issued for (i) the Complainant to amend the Complaint to include the registrant of the Domain Name 2 and file submissions on consolidation of the multiple Respondents, and (ii) the Respondents to respond to the Complainant’s supplemental filing dated April 17, 2020, and respond to the Complainant’s reply to the item (i) above. The Complainant filed its amendment to the Complaint on May 6, 2020. The Respondents did not submit any response.
4. Factual Background
The Complainant, founded in 2009, is a women’s fashion company with more than 100 boutiques in 30 states in the U.S.. It produces a wide range of fashion goods including clothing, jewelry, bags, wallets, sunglasses, hair accessories, scarves, hats, belts and home décor under the brand name, Altar’d State.
ALTAR’D STATE is registered as a trade mark in many jurisdictions all over the world. Some of the trade mark registrations submitted in evidence include:
- U.S. Trade Mark Registration No. 3986450 for ALTAR’D STATE in international class 35, registered on June 28, 2011;
- U.S. Trade Mark Registration No. 4870948 for ALTAR’D STATE in international classes 3, 4, 9,14,18, 20, 24, 25 and 26, registered on December 15, 2015;
- Chinese Trade Mark Registration No. 21902235 for ALTAR’D STATE in international class 35, registered on December 28, 2017; (individually and collectively the “Trade Mark”).
The Complainant has a strong Internet presence and operates and online store at “www.altardstate.com”. It is also very active on the different social media platforms. Besides the domain name for its principle website, the Complainant also owns the following domain names: <altardstate.info>, <altardstate.net> and <altardstate.site>.
The Respondent 1, an individual based in China, registered the Domain Name 1 on January 28, 2019. At the time of filing of the Complaint, the Domain Name 1 was connected to a website that bears the Trade Mark prominently on the home page and purports to sell fashion goods under the Trade Mark (the “Website 1”). The Website 1 includes images and photographic content belonging to the Complainant and used on the Complainant’s own website.
In October 2019, an agent on behalf of the Complainant placed an order on the Website 1 and paid through the shopping cart to a Paypal account. Whilst Paypal sent a confirmation email, none was sent by the operator of the Website 1 nor were the products purchased ever received by the agent. On October 30, 2019, the Complainant’s legal representatives requested the Internet service provider hosting the Website 1 to deactivate it. After it was taken down, the Respondent 1 moved it to another service provider. A similar take down notice to the new service provider was ignored.
The Respondent 2, an individual also based in China, registered the Domain Name 2 on March 9, 2020, after the filing of the Complaint. The Domain Name 1 redirects to a website connected to the Domain Name 2 with content which is the same as the Website 1 and also bears the Trade Mark and images and photographic content belonging to the Complainant (“Website 2”).
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondents did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issues
6.1 Complainant’s Supplemental Filing
On April 17, 2020, prior to the Panel making its decision, the Complainant filed an unsolicited supplemental filing requesting that the Domain Name 2 be added to the Complaint. The Complainant had not included the Domain Name 2 at the time of the filing of the Complaint as it was registered after the filing of the Complaint. The Website 1 which was connected to the Domain Name 1 has now been redirected to the Website 2 which is connected to the Domain Name 2. Both Websites bear the same content which includes the Trade Mark and the Complainant’s copyrighted material.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. Such filings are only accepted in exceptional circumstances where it is clear that the filing is relevant to the case and why the Complainant was unable to provide the information when filing the Complaint.
In this case, the Panel finds that it does fall within these “exceptional circumstances” and allows the unsolicited supplemental filing to include the Domain Name 2 as it is clear in this instance that the Complainant could not have known about the additional Domain Name 2 at the time of the filing of the Complaint. The Panel will expand on the reasons for its decision in the section below on consolidation of proceedings against multiple respondents. In any event, the Respondents had the opportunity but chose not to file any response to address the Complainant’s unsolicited supplemental filing.
6.2 Consolidation of the Proceedings
The Complainant has amended its Complaint so that it is in effect filing a single complaint in relation to two domain names against multiple registrants. The preliminary issue to be determined is whether the Complainant is entitled to bring a consolidated complaint against the Respondents, or whether it is necessary for the Complainant to bring individual complaints against the individual Respondents.
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In relation to the position of a complaint being filed against multiple respondents, section 4.11.2 of the WIPO Overview 3.0 provides that in such cases, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation of multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfil the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, the Complainant submits that the Domain Names are subject to common control for the following reasons:
(1) Both Domain Names incorporate the Trade Mark and the Complainant’s photographic content at the corresponding Websites;
(2) The Domain Name 1 currently redirects to the Website 2 which is connected to the Domain Name 2 after the filing of the Complaint;
(3) Both Domain Names are registered to the same Registrar;
(4) Both Respondents are located in China;
(5) The registering of the Domain Names using aliases and fictitious business names are typical of infringers who seeking to minimize the appearance of their counterfeiting activities, in order to avoid detection which is the case here;
(6) From the above, the Respondent 1 and the Respondent 2 are either one and the same person or acting jointly. As such the Domain Names are in common control.
(7) Requiring the Complainant to file a separate complaint for the Domain Name 2 would hinder the dispute resolution process, increasing costs for the Complainant, allowing the Respondents to continue to engage in bad faith and unauthorized conduct using the Trade Mark.
The evidence submitted points to the fact that the Domain Names are subject of common control by the Respondents. The above pattern evidences common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Mark.
The Respondents had the opportunity but did not respond to the consolidation request.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
In light of the above, the Respondents may be referred to collectively as the “Respondent” hereafter.
6.3 Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Websites are in the English language which is evidence of the Respondent’s competence in the language;
- The Complainant’s business is conducted primarily in English and it is unable to communicate in Chinese;
- The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.
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.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. In all the circumstances, the Panel determines that English be the language of the proceeding.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Names contain the Complainant’s Trade Mark in its entirety saved for the apostrophe together with the descriptive terms “outlet” and “store”. The addition of these terms do not negate the confusing similarity encouraged by the Respondent’s integration of the Trade Mark in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are confusingly similar to the trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose. Further, the Respondent is not commonly known by the Domain Names. The Websites purport to offer for sale the Complainant’s products. Further, the Websites do not accurately and prominently disclose the Respondent’s relationship with the Complainant. Moreover, the Panel finds that the prominent display of the Trade Mark increases the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Websites. The Complainant contends that the products on sale on the Websites are counterfeit goods. The fact that an attempted purchase on the Website 1 yielded no delivery of the goods is evidence that the Websites appear to have been used to defraud consumers by paying for non-existent goods or obtaining personal and financial information by the Respondent for nefarious purposes.
There can be no rights or legitimate interests in the use of a third party’s trade mark in a domain name in connection with a fraud scheme where a respondent is seeking to defraud others by relying on the trade mark.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The very incorporation of the Trade Mark in the Domain Names, the display of the Trade Mark, the purported offer for sale of the Complainant’s products and the use of the Complainant’s photographs on the Websites confirm the Respondent’s awareness of the Trade Mark. It is implausible that it was unaware of the Complainant when it registered the Domain Names especially in the case of the Domain Name 2 which was registered after the Complaint was filed.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the fact that the Domain Names are being used as an instrument of fraud nor any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Names in bad faith.
The Domain Names are also being used in bad faith. The Domain Names resolve to the Websites purportedly offering for sale the Complainant’s products. In fact, for reasons set out in the section 7.C. above, it appears that there are no products for sale on the Websites, and it is more likely than not that the offer for sale on the Websites are used to perpetrate fraud. This amounts to using the Domain Names to intentionally attract for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant as the source, sponsorship, affiliation or endorsement of the Websites is bad faith in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <altardstateoutlet.com> and <altardstatestore.com> be transferred to the Complainant.
Date: June 1, 2020