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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Strong Current Enterprises Limited v. Alan Chan

Case No. D2020-0953

1. The Parties

The Complainant is Strong Current Enterprises Limited, China, represented by Glen Camille Angeles, China.

The Respondent is Alan Chan, China.

2. The Domain Name and Registrar

The disputed domain name <tvbuddyshop.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On April 5, 2020, the Center received an email communication from the Respondent, in response to which the Center sent an email communication to the Parties on May 8, 2020, inviting them to explore settlement negotiations. The Complainant filed an amended Complaint on May 9, 2020 and settlement was not pursued.

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 May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Parties on June 23, 2020, that it would proceed to appoint the Administrative Panel.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on July 19, 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.

4. Factual Background

The Complainant, Strong Current Enterprises Limited is an e-commerce platform for sourcing products, and delivering them to customers worldwide. With over 15 years of experience in sourcing and shipping, the Complainant claims that it provides a proven sales funnel and the easy solution to all users’ e-commerce needs.

The Complainant and its affiliate, DFO Global Performance Commerce Limited, have rights in the TVBUDDY trademark registrations in many countries, including United States of America trademark Reg. No. 5752639, registered on May 14, 2019, and No. 6066012, registered on May 26, 2020; German trademark Reg. No. 302019023222, registered on March 4, 2020.

According to the information disclosed by the Registrar, the Respondent is Alan Chan, located in Hong Kong, China.

The disputed domain name is <tvbuddyshop.com>, registered on March 7, 2020. According to the Complainant’s evidence, the disputed domain name resolved to an online store on Shopify E-commerce platform named “TV BUDDY STORE”, which is inaccessible now.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its TVBUDDY trademark. The addition of a non-distinctive term “shop” is insufficient to differentiate the similarity between the disputed domain name and the Complainant’s TVBUDDY trademark.

The Complainant further contends that the Complainant has not licensed or otherwise authorized the Respondent to use its TVBUDDY trademark for any purpose. There is no evidence proving that the Respondent has been commonly known by the disputed domain name. Moreover, the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor making a legitimate noncommercial or fair use.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The Center received an email communication prior commencement of the proceedings from the Respondent’s email address confirmed by the Registrar, in which the Respondent asks for “[…] advise on the necessary steps to have this resolved”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant and its affiliate DFO Global Performance Commerce Limited own rights upon several registrations of TVBUDDY trademark, which predate the registration date of the disputed domain name (March 7, 2020). The Complainant has successfully established its rights upon TVBUDDY trademark.

It is well established that the generic Top-Level Domain (“gTLD”) suffix “.com” as a standard registration requirement is disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s TVBUDDY trademark.

The disputed domain name <tvbuddyshop.com> incorporates the Complainant’s TVBUDDY trademark in its entirety. Previous UDRP decisions have established that if a complainant’s trademark is recognizable within a domain name that is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. The addition of the term “shop” after the Complainant’s TVBUDDY trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s TVBUDDY trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)

Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s TVBUDDY trademark.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case. The Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview 3.0, section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.

The Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. Further, according to the Complainant’s evidence, the Panel observes that the disputed domain name resolved to an online store on Shopify E-commerce platform named “TV BUDDY STORE” boldly displaying the Complainant’s TV BUDDY trademark. Moreover, the store was selling products in the same category as the Complainant’s. After the commencement of this UDRP proceeding, the “TV BUDDY STORE” online store was removed and inaccessible.

Furthermore, the Panel views that the Respondent’s use of the disputed domain name cannot be considered as making a legitimate noncommercial or fair use of the disputed domain name nor using the disputed domain name in connection with a bona fide offering of goods or services. Further, there is no evidence on record showing that the Respondent has been commonly known by the disputed domain name.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered on March 7, 2020, which was after the registration date of the Complainant’s TVBUDDY trademark. The Complainant and the Respondent are both located in Hong Kong, China. Moreover, the disputed domain name resolved to the “TV BUDDY STORE” online store boldly displaying the Complainant’s TVBUDDY trademark. Thus, the Panel holds that the Respondent must have been aware of the Complainant’s trademark and/or business at the time of registering the disputed domain name. Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.

Furthermore, the “TV BUDDY STORE” associated with the disputed domain name offered products in the same category as the Complainant’s on other e-commerce platform Shopify and competitive products. Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services as described under paragraph 4(b)(iv) of the Policy. See Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.

Moreover, after the commencement of the UDRP proceeding the Respondent not only failed to respond to the Complainant’s contentions, but also removed the “TV BUDDY STORE” associated with the disputed domain name, which is further evidence of bad faith.

For the reasons above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <tvbuddyshop.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Date: August 5, 2020

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