WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Susan Lordi v. 熊丽芳 (xiong li fang), 青白江普妙溪日用品经营部 (qing bai jiang pu miao xi ri yong pin jing ying bu)

Case No. D2021-4148

1. The Parties

The Complainant is Susan Lordi, United States of America (“United States”), represented by Hovey Williams LLP, United States.

The Respondent is 熊丽芳 (xiong li fang), 青白江普妙溪日用品经营部 (qing bai jiang pu miao xi ri yong pin jing ying bu), China.

2. The Domain Name and Registrar

The disputed domain name <willowtreearts.shop> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 14, 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 December 16, 2021.

On December 14, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 16, 2021, the Complainant submitted a 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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Respondent did not submit any response. The Center received the Respondent’s emails in English on December 24, 2021, and December 27, 2021. The proceeding was suspended on December 28, 2021, to allow the Parties to reach a settlement and was subsequently reinstituted by the Center on January 27, 2022, at the Complainant’s request, due to the failure of the Parties to reach a settlement. On February 9, 2022, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 15, 2022. 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 designer of figurines and home décor products, based in the United States. Since at least the year 2000, the Complainant has used the WILLOW TREE trademarks in connection with her products, and actively licenses these marks to a selection of authorized dealers located throughout the United States, Canada, Europe, and Australia. In addition, the Complainant’s products are also marketed at the website hosted at <willowtree.com>, the official domain name hosting an approved e-commerce website operated by one of the Complainant’s authorized dealers and licensees, i.e. DD Traders, Inc., d/b/a Demdaco.

The Complainant provides evidence that she owns a trademark portfolio protecting the mark WILLOW TREE, including, but not limited to, United States trademark registration number 3572110 for the word mark WILLOW TREE, with the registration date of February 10, 2009, and Chinese trademark registration number 11633838 for the word mark WILLOW TREE, with the registration date of March 28, 2014. The Complainant also provides evidence that it owns a portfolio of trademark registrations for the word mark SUSAN LORDI, including United States trademark registration number 3507543, registered on September 30, 2008.

The disputed domain name was registered on September 26, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directed to a website in English, prominently featuring the Complainant’s WILLOW TREE and SUSAN LORDI trademarks and products, as well as content, information and a number of images apparently copied directly from the official website hosted at the domain name <willowtree.com>. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for WILLOW TREE, 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 have been used continuously since the year 2000, and submits affidavits, commercial and marketing information, as well as a number of decisions in prior UDRP proceedings initiated by the Complainant and where the respective panels have transferred the domain name in question to the Complainant (see for instance Susan Lordi Marker v. Name Redacted, WIPO Case No. D2020-1866). The Complainant particularly contends that the Respondent has plagiarized a significant amount of pictures and content from the official website at the domain name <willowtree.com>, that the Respondent is using the disputed domain name to fraudulently advertise the Complainant’s WILLOW TREE products, and that the disputed domain name is replete with unauthorized references to, and use of the Complainant’s WILLOW TREE trademarks, as well as the Complainant’s name and SUSAN LORDI trademarks and photographs of the Complainant. The Complainant states that the Respondent is in no way connected to or licensed by the Complainant. The Complainant also contends that the Respondent is intentionally attempting to misdirect Internet users through the Respondent’s website, for commercial gain, by fraudulently holding itself out to be the Complainant, or a licensee or authorized distributor of the Complainant, and that such use of the WILLOW TREE trademarks in the disputed domain name does not confer any rights or legitimate interests on the Respondent, and constitutes use in bad faith.

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

B. Respondent

The Respondent’s contentions are stated in the contents of its emails of December 24, 2021, and December 27, 2021, which can be summarized as follows: the disputed domain name is used to promote its products online in China and on Facebook; there is no mention of any WILLOW TREE-related information or products and the sign “willowtreearts” does not correspond to a Chinese trademark. The Respondent also contends that the disputed domain name was registered at will, and was not used to perform any commercial promotion or generate any income, so its use did not infringe on the Complainant’s rights. In spite of these arguments submitted by the Respondent, the Respondent offered to assign the disputed domain name free of charge to the Complainant and stated that it “closed” all website publicity and promotion. However, the Respondent subsequently did not respond to the Complainant when the Complainant enquired about the concrete arrangements for such assignment.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the 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 language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding.

In considering this request, the Panel has carefully reviewed all elements of this case, and deems 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 by the Respondent (the Panel notes that the Respondent was invited by the Center in a timely manner in Chinese and English to present its comments on the language of the proceeding in either Chinese or English, but chose not to do so); the fact that the Respondent responded to the Complaint in English through its emails of December 24, 2021, and December 27, 2021, 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 the proceeding could lead to unwarranted delays and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and has decides that 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 WILLOW TREE, based on its intensive use of the same and its corresponding trademark registrations in various jurisdictions.

As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, being the Complainant’s WILLOW TREE trademark followed by the descriptive term “arts”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s WILLOW TREE trademark, which remains easily recognizable in the disputed domain name as its only distinctive feature. The Panel considers that the addition of the term “arts” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.shop” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar 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, the Respondent 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).

The Panel notes that the Respondent did not provide any evidence in this regard and merely stated in its emails of December 24, 2021, and December 27, 2021, that there is no mention on its website of any WILLOW TREE-related information or products, and that the disputed domain name was not used to perform any commercial promotion or generate any income for the Respondent, so that it is not infringing on the Complainant’s rights. Upon review of the evidence provided by the Complainant relating to the contents of the website that was linked to the disputed domain name, the Panel considers these statements by the Respondent to be inconsistent and the Respondent did not address/refute the Complainant’s evidence. In the Panel’s view, the disputed domain name directed to a website prominently displaying the Complainant’s WILLOW TREE and SUSAN LORDI trademarks and products, as well as content, information, and images taken directly from the official website for the Complainant’s products hosted at the domain name <willowtree.com>, without displaying a disclaimer about the lack of relationship between the Parties or any other indications of the Respondent’s potential rights of legitimate interests in the disputed domain name. Moreover, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage mentioning solely “Sorry, this shop is currently unavailable.”. In this regard, in this case, the Panel finds that bearing in mind the Respondent’s previous alleged use of the domain name and holding this domain name without making any current use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691, and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademark for WILLOW TREE in its entirety, combined with the descriptive term “arts”, which corresponds to the Complainant’s line of business, carries a risk of implied affiliation, and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

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 Panel finds that the registration of the disputed domain name was intended to take unfair advantage of the Complainant’s trademarks for WILLOW TREE, by using such mark in its entirety in the disputed domain name, to mislead and divert Internet users to the website hosted at the disputed domain name. The Panel considers the disputed domain name to be so closely linked and so obviously connected to the Complainant and its trademarks (i.e. it suggests hosting a web-shop for WILLOW TREE-branded art works) that the Respondent’s registration of this domain name persuasively points toward the Respondent’s bad faith. Moreover, given the distinctiveness of the Complainant’s trademark, and the conscious choice of the Respondent to combine it in its entirety in the disputed domain name with the descriptive word “arts” and the gTLD “.shop”, the Panel finds that the registration of the disputed domain name clearly targeted the Complainant’s trademarks, and that the Respondent therefore knew, or at least should have known, of the existence of the Complainant’s trademarks. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to an active webpage, which prominently displayed the Complainant’s WILLOW TREE and SUSAN LORDI trademarks and products, as well as content, information, and images taken directly from the official and approved website for the Complainant’s products hosted at the domain name <willowtree.com>. In the Panel’s view, this shows that the Respondent was abusing the Complainant’s trademarks to mislead and divert Internet users for commercial gain to its commercial website. However, on the date of this decision, the disputed domain name links to an inactive website. The Respondent did not address this in their replies. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the commercial and plagiarized contents of the website previously linked to the disputed domain name, to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, to the high degree of distinctiveness of the Complainant’s trademarks, and to the unlikelihood of any good faith use to which the disputed domain name may be put by the Respondent. In these circumstances, the Panel considers that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith and rather, the change in use reinforces the finding that the Respondent lacks a credible good faith explanation as to the registration and use of the disputed domain name. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any 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 <willowtreearts.shop> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: March 1, 2022