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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Unilever PLC v. 曹伟 (Cao Wei)

Case No. D2021-2762

1. The Parties

The Complainant is Unilever PLC, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is 曹伟 (Cao Wei), China.

2. The Domain Name and Registrar

The disputed domain name <unilever.shop> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2021, 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 August 25, 2021, 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 in English on August 26, 2021.

On August 25, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 26, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 18, 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 was founded in 1929 through a merger between the Lever Brothers and Margarine Unie, and is currently headquartered in the United Kingdom. The Complainant has grown into a large multinational company, offering an array of consumer goods. The Complainant is dual-listed on both the London Stock Exchange and the New York Stock Exchange, and provides evidence that its total turnover in 2020 reached EUR 50.7 billion.

The Complainant submits evidence that it owns a large trademark portfolio for UNILEVER (word and logo marks), including, but not limited to, United Kingdom trademark registration number UK00000879310 for UNILEVER, registered on May 11, 1965; international trademark registration number 842205B for the U UNILEVER logo mark, registered on February 20, 2004, designating, inter alia China; and Benelux trademark registration number 744216 for the U UNILEVER logo mark registered on February 17, 2004. The Complainant also owns a portfolio of official domain names, including, <unilever.com> registered on April 8, 1995. In its Complaint, the Complainant also refers to prior UDRP decisions, such as Unilever PLC, Unilever N.V. v. Luca Mueller, WIPO Case No. D2009-0672, in which its UNILEVER trademarks were recognized by the panel as famous and where transfer of the disputed domain name in the administrative procedure was ordered by the panel.

The disputed domain name was registered on November 23, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an active parking webpage, where the disputed domain name is offered for sale for the amount of USD 15,000.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademarks for UNILEVER, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as a number of prior UDRP decisions in which the respective panels recognized that the Complainant’s trademark for UNILEVER is famous, such as Unilever PLC, Unilever N.V. v. Luca Mueller, WIPO Case No. D2009-0672. The Complainant particularly contends that the Respondent is using the disputed domain name to direct Internet users to a parking website, which constitutes passive holding of the disputed domain name to prevent the Complainant from reflecting the mark in a corresponding domain name. Moreover, the Complainant contends that the Respondent is attempting to sell the disputed domain name for an amount in excess of the Respondent’s out-of-pocket costs and that there are no justifications for the use of its trademarks in the disputed domain name. Finally, the Complainant also contends that the Respondent has engaged in a pattern of bad faith cybersquatting.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to the Registrar’s verification response, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed both its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the website linked to the disputed domain name is entirely in English, from which the Panel deducts that the Respondent is able to understand and communicate in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this administrative proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(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 has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark UNILEVER, based on its intensive use and registration of the same as trademarks in a large number of jurisdictions.

Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the disputed domain name consists of only the Complainant’s registered trademark for UNILEVER, followed by the generic Top-Level Domain (“gTLD”), “.shop”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1, which states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. The Panel concludes that the disputed domain name contains only the Complainant’s trademark for UNILEVER, and that the disputed domain name is therefore identical to this trademark owned by the Complainant.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the facts and evidence submitted, the Panel notes that the disputed domain name directs to an active parking webpage, containing only an offer for sale of the disputed domain name for USD 15,000, which is an amount far in excess of the documented out-of-pocket costs related to the disputed domain name. In the Panel’s view, this shows that the Respondent’s intention was not to make any use of the disputed domain name as a bona fide provider of goods or services, or to make legitimate noncommercial use or fair use of the Complainant’s trademarks in the disputed domain name. Instead, it shows the Respondent’s clear intention to mislead and divert Internet users for commercial gain to this parking webpage offering the disputed domain name for sale, by taking unfair advantage of the goodwill and reputation of the Complainant’ trademarks for UNILEVER.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which is identical to the Complainant’s famous trademark for UNILEVER, is clearly intended to mislead and divert consumers away from the Complainant’s official websites to the website linked to the disputed domain name. Given the Respondent’s clearly intentional targeting of the Complainant’s internationally well-known trademark, of which it could not reasonably be unaware, the Panel finds that the registration of the disputed domain name was obtained in bad faith.

As to use of the disputed domain name in bad faith, the website linked to the disputed domain name currently directs to an active parking webpage, containing only an offer for sale of the disputed domain name for USD 15,000. This leads the Panel to conclude that the Respondent is using the disputed domain name to sell it in excess of the documented out-of-pocket costs related to the disputed domain name. In this regard, paragraph 4(b) of the Policy states that such use constitutes direct evidence of bad faith. Moreover, the Panel also finds that the Complainant sufficiently proves that the Respondent has been engaged in a pattern of trademark abusive registrations. In this regard, the Panel refers to a number of prior UDRP decisions involving the Respondent where the Respondent had engaged in similar acts of cybersquatting, including Kelin S.r.l. v. 曹伟 (Wei Cao), WIPO Case No. D2021-1356, and Medtronic, Inc. v. Cao Wei (曹伟), WIPO Case No. D2020-1947. Based on the aforementioned elements, the Panel concludes that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under 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 <unilever.shop> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: November 1, 2021

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