WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Strong Current Enterprises Limited v. Shivanshu Verma

Case No. D2020-2504

1. The Parties

The Complainant is Strong Current Enterprises Limited, Hong Kong, China, internally represented.

The Respondent is Shivanshu Verma, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 2, 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 amended Complaint on October 5, 2020.

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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Center received informal email communications from the Respondent on October 6, 2020, and on October 23, 2020. On October 27, 2020, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed David Taylor as the sole panelist in this matter on November 27, 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 December 11, 2020, the Panel issued a Panel Order, requesting that the Complainant provide further explanation and evidence of the Complainant’s relationship with its affiliate “Make Great Sales Limited”. On December 15, 2020, the Complainant submitted its reply to the Panel Order.

4. Factual Background

The Complainant is a company based in Hong Kong, China, engaged in the sale of various products under the BLAUX trademark, consisting primarily of portable electronic fans and air-conditioning units. The Complainant markets and sells its products via a website at the domain name <buyblaux.com>. For use in connection with the sale of its Blaux-branded products, the Complainant is the exclusive licensee of the following trademark:

- German Trademark Registration No. 302020005345, BLAUX, registered on May 12, 2020.¹

The disputed domain name was registered via a privacy service on July 24, 2020. Prior to the submission of the Complaint to the Center, the disputed domain name resolved to a website (the “Respondent’s website”) that prominently displayed the BLAUX trademark and purported to sell portable air conditioning units, similar to those offered by the Complainant under the BLAUX trademark. At the time of this decision, the disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the BLAUX trademark. The Complainant submits that the disputed domain name is identical or confusingly similar to the BLAUX trademark, as it includes an exact reproduction of the BLAUX trademark, together with the non-distinctive term “buy”.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent registered the disputed domain name some months after the Complainant made first use of the BLAUX trademark, and after its registration before the German Patent and Trademark Office. The Complainant asserts that the Respondent is not a licensee of the Complainant, nor is the Respondent authorized to make use of the BLAUX trademark for any purpose. The Complainant submits that the Respondent is not commonly known by the disputed domain name. The Complainant further submits that the Respondent is not making use of the disputed domain name in connection with any bona fide offering of goods or services.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent is using the disputed domain name to misdirect Internet users to the Respondent’s website. The Complainant argues that Internet users may be misled into believing that the Respondent’s website is that of the Complainant or is otherwise authorized by the Complainant. The Complainant submits that the Respondent has used the disputed domain name in an attempt to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the BLAUX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant requests transfer of the disputed domain name.

B. Respondent

In an informal email communication dated October 6, 2020, the Respondent wrote:

“[…] we don’t want any kind of battle if required you may buy the domain from us, We are ready to transfer/resell you, In favour of your name [sic]”

In a further informal email communication dated October 23, 2020, the Respondent wrote:

“Please ask the company to reply me about the issue. I’m ready to give up the domain but they are not replying to my emails. How this case will be closed. Please reach them and tell me how to do it. Should I cancel the domain from my side and case is closed. [sic]”

The Respondent did not submit a formal Response to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Matter: The Respondent’s Consent to Transfer

The Panel notes that the Respondent appears to consent to the remedy of transfer of the disputed domain name sought by the Complainant. At the same time, the Complainant’s efforts to resolve this via the standard settlement process provided for under paragraph 17 of the Rules appear to have been unsuccessful. Further noting that the Respondent’s consent appears to be conditional on the Complainant purchasing the disputed domain name from the Respondent, in the circumstances of the present case the Panel considers it appropriate to proceed to issue a decision on the merits; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10.

6.2. Substantive Matters

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it has been granted an exclusive licence to make use of the BLAUX trademark (German Trademark Registration No. 302020005345), including the right to bring legal actions to protect the trademark. Prior UDRP panels have held that a trademark owner’s affiliate, including an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint; see WIPO Overview 3.0, section 1.4. The Panel finds that the Complainant has established rights in the BLAUX trademark for purposes of the present Complaint.

The disputed domain name comprises the Complainant’s BLAUX trademark in its entirety, preceded by the descriptive term “buy”, under the generic Top-Level Domain (“gTLD”) (“.site”). The Panel finds that the addition of the descriptive term “buy” does not prevent a finding of confusing similarity, and that the Complainant’s trademark remains clearly recognizable in the disputed domain name; see WIPO Overview 3.0, section 1.8; see also Sanofi v. Pavel Bubnov, WIPO Case No. D2019-0579 (<buyambien.net>), and cases cited therein.

The gTLD (“.site”) may be disregarded for the purposes of assessment under the first element, as it is viewed as a technical requirement of registration; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the BLAUX trademark in which the Complainant has rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The disputed domain name previously resolved to a website that purported to offer goods similar to those offered by the Complainant, under the BLAUX trademark. The Respondent’s website made prominent use of the BLAUX trademark, and the footer of the website simply stated “© 2020 BLAUX”, without further information as to the owner of the Respondent’s website.

The Complainant has not authorized the Respondent to make use of the BLAUX trademark, nor is there any evidence of the Respondent having been granted any licence or other authorization to make use of the BLAUX trademark by the owner of the mark, Make Great Sales Limited.

Even if the Panel were to take the view that the goods offered for sale at the Respondent’s website were genuine Blaux-branded products, the Respondent’s website did not contain any disclaimer or other statement indicating its non-affiliation with the owner of the BLAUX trademark. Rather, the Respondent’s website gave the misleading impression of being an official website for the sale of Blaux-branded goods. Therefore, the Panel does not consider that the Respondent has made use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See in this regard WIPO Overview 3.0, section 2.8; see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Panel further finds that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s knowledge of the BLAUX trademark and the goods offered under the mark can readily be inferred from the Respondent’s subsequent use of the disputed domain name in connection with a website that purported to offer Blaux-branded goods for sale. The Respondent’s intent to target customers of the Complainant can further be inferred by the composition of the disputed domain name, which differs from the Complainant’s official domain name <buyblaux.com> only in terms of the applicable gTLD. The Panel finds that the Respondent registered the disputed domain name without authorization from the trademark owner, with a view to taking commercial advantage of the BLAUX trademark, in bad faith.

The Panel accepts the Complainant’s submission that by using the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the BLAUX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products purportedly offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The fact that the disputed domain name no longer resolves to an active website does not materially affect the Panel’s findings above.

Finally, the Respondent’s concealing of its identity by registering the disputed domain name using a privacy service, and the Respondent’s attempt to sell the disputed domain name to the Complainant serve as further evidence of the Respondent’s bad faith.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 <buyblaux.site> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: January 5, 2021

¹ Registered to Make Great Sales Limited of the United States of America.