WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Full Fortune Intellectual Limited v. 刘钊 (Liuzhao) and 刘有琴 (Liuyouqin)

Case No. D2021-2243

1. The Parties

The Complainant is Full Fortune Intellectual Limited, Hong Kong, China, represented by Allen & Overy LLP, United Kingdom.

The Respondents are 刘钊 (Liuzhao), China, and 刘有琴 (Liuyouqin), China.

2. The Domain Names and Registrar

The disputed domain names <heydudes.net> and <heydudesshoes.net> are registered with Xiamen ChinaSource Internet Service Co., Ltd.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2021, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English including a consolidation request on July 21, 2021.

On July 19, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 16, 2021.

The Center appointed 陈长杰 Jacob (Changjie) Chen as the sole panelist in this matter on August 26, 2021. 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 is a footwear company, based in Hong Kong, China, and trades under the brand of “Hey Dude”.

The Complainant owns registrations of the HEY DUDE trademark, including the United States of America Trademark Registration No. 5516629, registered on July 17, 2018, Registration No. 5455302, registered on April 24, 2018, and Registration No. 5908627, registered on November 12, 2019.

The Complainant owns domain names incorporating its HEY DUDE trademark, including <heydudeshoes.com>, <heydudeshoesusa.com>, and <heydudeshoes.co.uk>.

According to the information disclosed by the Registrar, the Respondents are 刘钊 (Liuzhao), China and 刘有琴 (Liuyouqin), China.

The disputed domain names are <heydudes.net> (registered on May 7, 2021), and <heydudesshoes.net> (registered on June 1, 2021). The two disputed domain names resolve to highly similar websites purportedly offering for sale Hey Dude shoes.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its HEY DUDE trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant finally contends that the disputed domain names were registered and are being used in bad faith.

B. Respondents

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

6. Discussion and Findings

6.1. Preliminary Issues

A. Consolidation: Multiple Domain Name Registrants

In accordance with paragraph 3(c) of the Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the current case, the two disputed domain names are registered by two different individual registrants. Given that, the Complainant should have filed two separate complaints.

However, in the amended Complaint, the Complainant contends that the two disputed domain names are under the control of a single entity and requests to consolidate the proceedings. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are under common control; and (ii) the consolidation would be fair and equitable to all parties.See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

According to the evidence provided by the Complainant and registrants information disclosed by the Registrar, the two disputed domain names share an identical contact telephone number and an identical email address. Further, the two disputed domain names resolve to highly similar websites purportedly offering for sale Hey Dude shoes. Given that, the Panel determines that the two disputed domain names are under the common control. Besides, the Panel sees no risk of unfairness on any Party by consolidating the proceedings.

Having considered all circumstances above, the Panel determines under paragraph 3(c) of the Rules that the proceedings shall be consolidated. Therefore, the Respondents are referred to hereinafter as the “Respondent”.

B. Language of the Proceeding

In this case, the language of the Registration Agreements for the dispute domain names is Chinese.

The Complainant requests the language of the proceeding to be English. The main arguments of the Complainant are that the Respondent has knowledge of the English since the websites directed by the dispute domain names are entirely in English, and that conducting the proceeding in Chinese would be unfair to the Complainant.

Paragraph 11(a) of the Rules does allow the Panel to determine that a language other than the language of the Registration Agreement shall be the language of the proceeding in some circumstances.

According to the evidence provided by the Complainant, the Panel holds that the Respondent should understand English because the websites directed by the disputed domain names are entirely in English. Having received the Center’s emails in English and Chinese related to the language of the proceeding and notification of the Complaint, the Respondent has chosen not to respond to the Complainant’s request for English to be the language of the proceeding nor to the Complaint. The Panel would have accepted a Response in Chinese, but none was filed.

The Panel holds that requiring the Complainant to translate the Complaint into Chinese would unduly cause delay on the proceeding and additional costs to the Complainant. To ensure that the proceeding takes place with due expedition, the Panel determines under paragraph 10 and paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns rights upon registrations of HEY DUDE trademark, which predate the registration dates of the disputed domain names. The Complainant has successfully established its rights upon HEY DUDE trademark.

It is well established that the generic Top-Level Domain (“gTLD”) “.net”, as a standard registration requirement, should be disregarded in assessment of confusing similarity between the disputed domain names and the Complainant’s HEY DUDE trademark.

The distinctive parts of the disputed domain names are “heydudes” and “heydudesshoes” respectively, which incorporate the entirety of the Complainant’s HEY DUDE trademark. The addition of the letter “s” or the letter “s” and term “shoes” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s HEY DUDE trademark.

Thus, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s HEY DUDE 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 names. The burden of production on this element hence shifts to the Respondent to rebut the Complainant’s contentions. In this case, given 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.

According to the Complainant’s evidence, the Respondent directs the disputed domain names to two highly similar websites that display copyrighted images of the Complainant’s products and purportedly offer for sale Hey Dude shoes. In particular, the footer of the website at the disputed domain name <heydudesshoes.net> states that it is the “Hey Dude Shoes Official Online Shop”; and the website at the disputed domain name <heydudes.net> has copied texts found on one of the Complainant’s official websites. The Panel views that the Respondent’s use of the disputed domain names cannot be considered as a legitimate noncommercial or fair use nor is the Respondent using the disputed domain names in connection with a bona fide offering of goods or services. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain names.

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

C. Registered and Used in Bad Faith

Given the distinctiveness of the HEY DUDE trademark, and the composition and use of the disputed domain names, the Panel holds that the Respondent should have awareness of the Complainant’s trademark at the time of registering the disputed domain names. Thus, without any rights or legitimate interests, the Respondent’s registration of the disputed domain names with knowledge of the HEY DUDE trademark is an indication of bad faith.

The disputed domain names resolve to highly similar websites displaying copyrighted images of the Complainant’s products and purportedly offering or sale Hey Dude branded shoes. In particular, the footer of the website at the disputed domain name <heydudesshoes.net> states that it is the “Hey Dude Shoes Official Online Shop”; and the website at the disputed domain name <heydudes.net> has copied texts found on one of the Complainant’s official websites. The Panel views that with the clear understanding of the Complainant’s HEY DUDE trademark and the value of the disputed domain names, the Respondent has intention to profit from misleading the general public to visit the associated websites of the dispute domain names in the belief that the websites are the official websites of the Complainant. Further, the Complainant has provided evidence showing that some consumers have described the website at the disputed domain name <heydudes.net> variously as a “scam” and “not legit”. Therefore, the Panel holds that the Respondent’s purpose of registering and using the disputed domain names is to gain commercial profit from misleading the general public to visit the websites directed by the disputed domain names. The Respondent is using the disputed domain names in bad faith.

Therefore, the Panel concludes that the Respondent has registered and used the disputed domain names 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 names <heydudes.net> and <heydudesshoes.net> be transferred to the Complainant.

陈长杰 Jacob (Changjie) Chen
Sole Panelist
Date: September 13, 2021