WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teresa Brooks Chad Brooks Corporation: 11809107 Canada Inc. v. Frank Zhang, Casewee Trading Co., Ltd.
Case No. D2020-2888
1. The Parties
The Complainant is Teresa Brooks Chad Brooks Corporation: 11809107 Canada Inc., Canada, internally represented.
The Respondent is Frank Zhang, Casewee Trading Co., Ltd., China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <prenelove.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 2, 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 November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. The Center received an email communication from the Respondent on November 4, 2020. On November 11, 2020, the Complainant filed a supplemental filing with the Center. On November 25, 2020, the Center informed the Parties that it would proceed with the panel appointment process, pursuant to paragraph 6 of the Rules.
On November 29, 2020, the Complainant filed a second supplemental filing with the Center.
The Center appointed John Swinson as the sole panelist in this matter on December 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 December 9, 2020, the Complainant filed a third supplemental filing with the Center.
4. Factual Background
The Complaint was filed in the name of Teresa Brooks Chad Brooks Corporation: 11809107 Canada Inc. It appears that the Complainant is three distinct legal entities: Teresa Brooks and Chad Brooks (both individuals of Canada) and 11803107 Canada Inc. (a company incorporated in Canada on January 1, 2020). The Panel will treat the Complaint as a filing in the name of three complainants (collectively, the “Complainant”).
According to the Complaint, the Complainant has carried on a business designing and selling high quality neoprene bags since 2017-2018 and expanded into the United States of America in 2019.
The Complainant claims to be the owner of a number of registered trade marks and a trade mark application for PRENELOVE. The earliest of these was application number 1964429, filed in Canada on May 23, 2019. This application has not yet proceeded to registration. There is a United States of America registered trade mark for PRENELOVE (number 6121452), which was registered on August 11, 2020 (the “Trade Mark”). According to the relevant trade marks registers, the owner of the Trade Mark is Chad Brooks.
The Complainant is also the owner of a domain name incorporating the Trade Mark, <prenelove.ca>, which the Complainant registered on February 21, 2019.
The Respondent is Casewee Trading Co., Ltd, a company incorporated in China. The Respondent did not submit a formal response but sent an email communication to the Center on November 4, 2020. According to the Respondent’s communication, the Respondent has been selling neoprene tote bags since 2017. The Respondent states that he registered the Disputed Domain Name on March 7, 2018. The Disputed Domain Name currently resolves to a website operated by the Respondent that sells neoprene bags.
5. Parties’ Contentions
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark.
Rights or legitimate interests
The Respondent has been operating in China since 2017. The Respondent manufactures products (some of which are neoprene) and sells these products to companies on a wholesale basis.
In early 2019, the Complainant was looking for manufacturers to produce its bags and contacted the Respondent via an online messaging service on January 16, 2019, to request that the Respondent provide a sample bag after seeing online that the Respondent was in the business of manufacturing neoprene products. The Complainant and the Respondent continued to exchange messages for a number of months and first discussed the Disputed Domain Name in August 2019. The Respondent stated that it had registered the Disputed Domain Name in 2017 and that it coincidentally matched the name of the Complainant’s business. The Respondent subsequently offered to donate the Disputed Domain Name to the Complainant but this did not occur.
Despite owning the Disputed Domain Name since 2017, the Respondent made no use of it until late 2019, when a website appeared at the Disputed Domain Name for the first time. This website, which is currently active at the Disputed Domain Name, prominently features the Trade Mark and offers products for sale which are similar to those sold by the Complainant.
The Respondent created the website at the Disputed Domain Name when it was clear the Complainant had decided not to use the Respondent’s manufacturing services. The Respondent created the website at the Disputed Domain Name to leverage off the Complainant’s brand in order to sell products which are deceptively similar to those offered by the Complainant. The Respondent is using the Disputed Domain Name for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark.
Registered and Used in Bad Faith
The Respondent is intentionally attempting to attract Internet users to the Disputed Domain Name for commercial gain by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name.
The page title that appears when a user accesses the Disputed Domain Name includes the Trade Mark followed by the ® symbol. This falsely suggests that the Respondent owns the Trade Mark.
The content on the website at the Disputed Domain Name is plagiarized from other, third party websites.
The Respondent previously operated an Instagram page which prominently featured the Trade Mark and claimed to offer “THE ONLY PRENELOVE® NEOPRENE BAGS”. The Complainant contacted Instagram and was successful in having the Respondent’s page removed.
The Complainant has received a number of complaints from customers who have paid to purchase bags from the website at the Disputed Domain Name (mistakenly believing it to be owned by or affiliated with the Complainant) and not received their purchases. This is causing reputation issues for the Complainant.
The fact that the Respondent has been selling wholesale neoprene products and registered the Disputed Domain Name in 2017 is not within the scope of this dispute.
The Respondent did not submit a formal response but the email communication sent to the Center on November 4, 2020 contained the following informal contentions.
The Respondent registered the Disputed Domain Name on March 7, 2018. The Complainant did not register its domain name <prenelove.ca> until February 21, 2019. Accordingly, the Complainant cannot argue that the Respondent registered the Disputed Domain Name to target the Complainant.
The Respondent has sold its neoprene bags since 2017 so its product is not similar to the Complainant’s. The Disputed Domain Name is part of the Respondent’s plan to build a great brand and the Complainant has copied the Respondent by registering its domain name <prenelove.ca> and the Trade Mark.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. Procedural matters
The Complainant submitted three supplemental filings on November 11, November 29, and December 9, 2020, respectively (the “Supplemental Filings”).
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. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged.
A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6).
The Panel notes that the first supplemental filing seems like a mere rebuttal of the Respondent’s contentions along with a conversation between the Parties in December 2019, and some communications by third parties that could serve to show some confusion with the Complainant’s trademark due to the use of the Disputed Domain Name. The Panel further notes that the second and third supplemental filings refer to communications received by third parties regarding confusion due to the use of the Disputed Domain Name. Several of these third parties communications were not available at the time of the submission of the Complaint.
Even if these Supplemental Filings were to be admitted, the Panel considers that these Supplemental Filings would not affect the Panel’s analysis under the third element. In addition, the Panel finds that the Complainant has not demonstrated any exceptional circumstances and the Panel has reviewed the Complainant’s Supplemental Filings and the matters raised do not affect the outcome of this case. Accordingly, the Supplemental Filings are not admitted.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (section 1.7, WIPO Overview 3.0).
In this case, the Disputed Domain Name incorporates the entirety of the Trade Mark with no additional terms.
The Trade Mark is owned by Chad Brooks. If, as outlined above, the Complainant is three separate legal entities, the Complainant has provided no evidence to demonstrate that the two other Complainant entities have rights in the Trade Mark. If instead the Complainant is a single legal entity, the Complainant has similarly failed to provide any evidence of a licence agreement between the Chad Brooks, the Trade Mark owner, and the Complainant. However, based on the content of the Complainant’s website and the contact details provided in the Complaint, the Panel considers that it is reasonably likely that the Trade Mark owner is associated with the other two Complainant entities.
This issue has arisen in a number of decisions under the Policy (see e.g., DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939). Generally speaking, in those decisions, Panels have required the complainant to produce evidence of its right to use the trade mark in question and to bring a proceeding under the Policy. For example, in Sunlane Media, d/b/a Liteerotica Free Adult Community v. Lucien de Cassan, WIPO Case No. D2002-0093, which similar to the present case, the relevant trade mark was owned by an individual who was the owner and controller of the complainant company. The licence granted by the individual in that case was held to be sufficient to confer a right on the complainant company to bring and succeed in the complaint.
The Panel finds that at least Chad Brooks would have had standing to file a complaint in this case. While it would have been preferable for the Complainant to provide more information on its claimed trade mark rights and the nature of the relationship between the supposed three Complainant entities, due to the Panel’s finding on bad faith, it is not necessary for the Panel to make a finding on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.
In light of the Panel’s finding in relation to the third element below, it is not necessary for the Panel to decide whether the Respondent has rights to or legitimate interests in the Disputed Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Registered in bad faith
The Respondent contends that it registered the Disputed Domain Name before the Complainant established its business and therefore the Respondent could not have been targeting the Complainant when it registered the Disputed Domain Name.
The Complainant did not submit any evidence demonstrating that it had developed a reputation in the Trade Mark or was operating its business at the time the Disputed Domain Name was registered. The Complainant registered its domain name <prenelove.ca> on February 21, 2019. The first application for a PRENELOVE trade mark was filed on May 23, 2019, and served as the basic application for an International Trademark dated on December 12, 2019, designating the United States. The Panel notes that the Trade Mark was registered in the United States of America on August 11, 2020. It appears that the Complainant’s Facebook and Instagram pages were created in early 2019. The Complainant company was registered on January 1, 2020.
There is no evidence that the Respondent would have been aware of the Complainant when the Respondent registered the Disputed Domain Name.
The Respondent could not have intended to target the Complainant by registering the Disputed Domain Name because there is no evidence that the Complainant’s business existed or that the Complainant was using the Trade Mark when the Disputed Domain Name was registered.
Accordingly, the Complainant has failed to establish that the Respondent registered the Disputed Domain Name in bad faith, as is required by the Policy.
Use in bad faith
It appears that the Respondent may be using the Disputed Domain Name in bad faith. However, in light of the Panel’s finding above, it is not necessary for the Panel to decide this point and the Panel finds that the Complainant fails on the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: December 17, 2020