WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Neal’s Yard (Natural Remedies) Limited v. Troy Ho

Case No. D2020-1890

1. The Parties

The Complainant is Neal’s Yard (Natural Remedies) Limited, United Kingdom, represented by Demys Limited (a Com Laude Group company), United Kingdom.

The Respondent is Troy Ho, China.

2. The Domain Name and Registrar

The Disputed Domain Name <nyr-cn.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 of the Complaint, and the proceedings commenced on July 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on September 11, 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, founded in 1981, is a company incorporated in the United Kingdom manufacturing and retailing cosmetics, skin care products and essential oils. The Complainant has over 200 employees and has over 60 retail stores around the world. The Complainant operates a transactional website at <nealsyardremedies.com>.

The following registered trademarks are owned by the Complainant:

(1) NYR HOME, United Kingdom trademark number UK00002511538, registered on October 23, 2009, designating class 3.

(2) NYR HOME and tree device (figurative), United Kingdom trademark number UK00002513304, registered on December 04, 2009, designating class 3.

The Respondent is an individual located in Guangzhou, Guangdong, China, and the Disputed Domain Name <nyr-cn.com> was registered on January 15, 2010. The Disputed Domain Name resolves to a website that appears to be selling the Complainant’s products obtained through distribution channels that are not authorized by the Complainant. The website to which the Disputed Domain Name resolves contains Chinese phrases meaning “NYR Chinese Official Website” shown on the website.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the NYR HOME trademarks in which the Complainant has rights

The Disputed Domain Name only differs from the Complainant’s trademark by removing the term “HOME” and adding the generic and descriptive letters “CN”, which represent China. Such modifications do not detract from or mitigate the dominance of the term “NYR” of the Complainant’s mark as the most significant element of the Disputed Domain Name.

The Respondent’s website prominently incorporates the Complainant’s NYR HOME and tree device mark, and the Respondent’s website sells the Complainant’s products obtained through unauthorized distribution channels. Therefore, it is clear that the Respondent’s inclusion of the dominant “NYR” element of the Complainant’s trademark was intended to target the Complainant’s trademark.

The Top-Level Domain “.com” is a generic Top-Level Domain and should be disregarded for the purpose of comparing the Disputed Domain Name to the Complainant’s trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
<nyr-cn.com>

The Respondent is not a licensee of the Complainant and has not received any permission to use the Complainant’s trademarks. The Complainant has found no evidence showing that the Respondent has been commonly known as “NYR CN”; owns any trademarks incorporating the term “NYR CN”; or has ever traded legitimately under the business name of “NYR CN”.

The Complainant further asserts that the Disputed Domain Name has not been used in connection with any legitimate noncommercial or fair use, as the Disputed Domain Name has always resolved to an online shop.

The circumstances of the present matter closely mirror those seen in previous cases against the Respondent, in which the panels found the Respondent had no rights or legitimate interests in respect of the disputed domain names.

(iii) The Disputed Domain Name <nyr-cn.com> has been registered and is being used in bad faith

The Complainant asserts that it is inconceivable that the Respondent did not have the Complainant firmly in mind when registering, given that the Complainant and its trademarks are well-known.

Due to the fact that the Disputed Domain Name resolves to an intentionally confusing website, and that the websites lacks any form of obvious or prominent disclaimer, it is sufficient to find that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s name and mark. The Disputed Domain Name was registered and is being used in bad faith.

The Complainant contends that the circumstances of the present matter closely mirror those seen in previous cases against the Respondent, in which the panels found the Respondent’s registration and use of the disputed domain names were in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant alleges that the Disputed Domain Name <nyr-cn.com> is identical or confusingly similar to its NYR HOME trademarks.

The Complainant has established that it is the owner of NYR HOME trademarks.

The Disputed Domain Name incorporates the most recognizable and dominant feature of the Complainant’s trademark, NYR, in its entirety. Furthermore, where a relevant trademark is recognizable within a disputed domain name, the addition of other descriptive, geographical, or pejorative terms would not prevent a finding of confusing similarity under the first element. (See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287).

In addition, the Top-Level Domain “.com” in the Disputed Domain Name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. (See Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087).

Considering the evidence of use of the Disputed Domain Name, the panel finds that the use of the Disputed Domain Name also supports a finding of confusing similarity with the Complainant’s trademark.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the overall burden of proof in UDRP proceedings is on the complainant. However, proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, where a complainant makes out a prima facie case, the burden of production on this element shifts to the respondent to demonstrate rights or legitimate interests in the domain name. (See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; B-Boy TV Ltd v. bboytv.com c/o Whois Privacy Service / Chief Rocka LTD, formerly named BreakStation LTD., WIPO Case No. D2012-2006).

The Complainant has established that it is the owner of the NYR HOME trademarks, and that it has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name.

There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of NYR-CN or any similar name. There is also no evidence indicating use of the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to an online shop, which uses a mark extremely similar to the Complainant’s trademark and claims itself to be the official Chinese website of the Complainant.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: […]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

The commencement of the Complainant’s business and the registration of the Complainant’s NYR HOME trademarks both predate the registration of the Disputed Domain Name. The Disputed Domain Name resolves to a website where the Complainant’s trademarks are used and the Complainant’s products are sold. Therefore, the panel finds that the Respondent knew or should have known that its registration would be identical or confusingly similar to the Complainant’s trademark.

As for the use of the Disputed Domain Name, 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 the Respondent’s website. The Respondent is using the Disputed Domain Name to sell the Complainant’s products and claims the website is the “NYR China official website”.

The Respondent has been found to register other domain names in bad faith in the past (See Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237; Johnson & Johnson v. troy ho, WIPO Case No. D2015-2090). In the previous cases and this case, the Respondent registered and used domain names that are confusingly similar to trademarks owned by manufacturers of cosmetics or skin care products. The panel finds a pattern of actions to target trademarks with regard to similar goods and services. This is an additional indication of the Respondent’s bad faith in registering and using the Disputed Domain Name.

There is no evidence in the record to support a finding that the registration and use of the Disputed Domain Name has been for any reason other than the intent to create a likelihood of confusion with the Complainant’s trademark and attract Internet users for commercial gain.

Having considered the above, the Panel finds that the Complainant has fulfilled the condition provided in paragraph 4(a)(iii) 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 <nyr-cn.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: September 24, 2020