Adanola Limited, Hyrum Cook v Zhang Fei, na, Client Care, Web Commerce

WIPO Case No. D2024-2448

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Adanola Limited, Hyrum Cook v. Zhang Fei, na, Client Care, Web Commerce
Communications Limited, Bogdan Tighineanu, na, proin seo, proinseo,
Sarfraz Ahmad, SEO, Alexa Anna, DEAN FLORALS LTD, BILAL BUTT,
Waqas Anwar, ramish butt

Case No. D2024-2448

1. The Parties

Complainant is Adanola Limited and Hyrum Cook, United Kingdom, represented by Addleshaw Goddard,

United Kingdom.

Respondent is Zhang Fei, na, China; Client Care, Web Commerce Communications Limited, Malaysia; ramish butt, Pakistan.

Bogdan Tighineanu, na, United Kingdom; proin seo, proinseo, Pakistan; Sarfraz Ahmad, SEO, Pakistan;

2. The Domain Names and Registrars

The disputed domain names <adanola-australia.com>, <adanolaaustralia.com>, <adanolabrasil.com>,
<adanola-canada.com>, <adanolacanada.com>, <adanolacz.com>, <adanola-danmark.com>,
<adanoladanmark.com>, <adanoladeutschland.com>, <adanoladubai.com>, <adanolaespana.com>,
<adanolafrance.com>, <adanolagreece.com>, <adanolaindia.com>, <adanola-ireland.com>,
<adanolaireland.com>, <adanolaisrael.com>, <adanolaitalia.com>, <adanola-japan.com>,
<adanolajapan.com>, <adanolamexico.com>, <adanola-nederland.com>, <adanolanederland.com>,
<adanola-norge.com>, <adanolanorge.com>, <adanolanz.com>, <adanolaosterreich.com>,
<adanolaphilippines.com>, <adanolapolska.com>, <adanolaportugal.com>, <adanolaschweiz.com>,
<adanolasingapore.com>, <adanolaspain.com>, <adanolasverige.com>, <adanola-turkiye.com>,
<adanolaturkiye.com>, <adanola-uae.com>, <adanolauae.com>, <adanola-uk.com>, <adanolauk.com>,
<adanolausa.com>, <adanolausastore.com> are registered with Alibaba.com Singapore E-Commerce
Private Limited.

The disputed domain names <adanolaclothing.shop>, <adanolaclothing.store>, and <adanolaofficial.store> are registered with NameCheap, Inc.

The disputed domain name <adanolahoodies.com> is registered with Hosting Concepts B.V. d/b/a
Registrar.eu.

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The disputed domain name <adanolahoodie.shop> is registered with Hostinger Operations, UAB.

The disputed domain name <adanolahoodies.shop> is registered with GoDaddy.com, LLC (collectively, the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2024. On June 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2024 and June 18, 2024, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown – privacy protected / Not available from Registry) and contact information in the Complaint.

The Center sent an email to Complainant on June 18, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting that Complainant either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all the disputed domain names are under common control. Complainant filed an amended Complaint on July 4, 2024.

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 Respondent of the Complaint, and the proceedings commenced on July 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2024.

The Center appointed Robert A. Badgley as the sole panelist in this matter on August 15, 2024. 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

Complainant alleges as follows:

“The Company's business is retail. In particular, the Company operates a high-end activewear and leisure associated with a specific aesthetic and active lifestyle. It is now a trusted and widely recognized brand for versatile athletic and leisurewear.”

brand for women with a strategic vision to be the number one active lifestyle brand, trading under the Mark,
‘ADANOLA’, i.e. the Business. Prior to the Company's incorporation [in 2018], Mr Cook launched the
Complainant holds various trademark registrations for ADANOLA, including United Kingdom trademark No.
UK00003152822, with a registration date of May 27, 2016.

Complainant registered the domain name <adanola.com> on September 6, 2013, and uses that domain name to host a commercial website. This site receives approximately 70,000 daily visitors. Complainant also has a social media presence, with 688,000 Instagram followers and 22,000 Facebook followers.

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Annexed to the Complaint are various examples of widespread consumer recognition of Complainant’s
ADANOLA mark.

All 48 disputed domain names were registered between October 9, 2023 and March 13, 2024, with the vast majority (35) being registered between December 12, 2023 and December 14, 2023. At various points in time, many of the disputed domain names resolved to websites mimicking Complainant’s commercial website, with many of the copyrighted photos taken directly from Complainant’s website.

According to the Complaint:

“Research undertaken on behalf of the Complainants shows that many of the Disputed Domain Names have black-listed. Of most concern is that many of the Disputed Domain Names resolved (or still resolve) to online shops which contain near-identical, copied and infringing content taken from the Complainants’ official website at (e.g. adanoladubai.com, adanolapolska.com, adanola-canada.com, adanolahoodie.shop, adanolahoodies.shop, adanolaclothing.shop, adanolaclothing.store). Such websites prominently display the Complainants’ logo, Mark, and copyright-protected images of the Complainants’ goods; and do not provide any disclaimer that would accurately disclose the Respondent’s lack of relationship with the Complainants. The Complainants have reason to believe that financial transactions have been encouraged and undertaken via the websites to which the Disputed Domain Names or some of them resolve, with no goods or products being received by the relevant consumers. Other of the Disputed Domain Names do not appear to have resolved to a live website, but instead indicate to visitors, given the use of the Mark in the domain name which otherwise appears to be a legitimate domain name, that the Complainants' business is no longer available or its official website is 'down' when that is not the case.”

in the past been or could at any time be used for fake, fraudulent websites purporting to sell the

Complainant asserts further:

“Notwithstanding that the Disputed Domain Names have – between them – nine different named registrants […], there is reasonable evidence to support the conclusion that the Disputed Domain Names were in fact all registered as one concerted campaign or effort, and that the various registrants are connected and/or

ultimately part of or controlled by the same underlying entity or person. For example, given the number of pattern in terms of content of the domain name and their use, it is reasonable to infer that they are all under common control as part of a campaign designed to interrupt the Complainants' business and trade off the back of their rights in and to the Mark. Indeed, investigatory work undertaken by Mintz Group on behalf of the Complainants in April 2024 indicates that the Disputed Domain Names are all linked or connected in some way and likely part of a large-scale campaign. The common controlling entity or individuals appear to be responsible for numerous other domain names and websites using other similar high-end brands, and so the Adanola business is not the only target.”

No person or entity identified in this proceeding as a Respondent has come forward to rebut the foregoing allegations, including the allegation that each of the 48 subject disputed domain names is owned by the same person or entity, or an alter ego thereof, or that all the disputed domain names are under common control.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

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B. Respondent

As noted above, none of the purportedly separate Respondents replied to any of Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation and Multiple Purported Respondents

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing Complainant’s request to consolidate in a single UDRP proceeding 48 disputed domain names purportedly registered by different

persons or entities, the Panel will consider whether (i) the disputed domain names or corresponding websites section 4.11.2.

are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See

First, 29 of the 48 disputed domain names are registered in the name of the same person (Zhang Fei), while
six are registered in the name of another person and seven are registered in the name of a third person.
Each of the remaining six disputed domain names is registered in the name of a separate person. The Panel
concludes, based on the undisputed record and the evidence in the record, that it is more likely than not that
all 48 disputed domain names are under common control such that consolidation of all 48 disputed domain
names in this single proceeding is warranted. The similarity of the disputed domain names themselves is
one powerful indicator of common control. Other factors include the fact that many of the disputed domain
names resolve to the same website, and the ones that do not resolve to the same website have other
overlapping characteristics beyond the close similarity of the disputed domain names themselves.

The foregoing factors, and the lack of any indication from any of the purportedly different Respondents that the disputed domain names are not all registered by the same person or under common control, leads the Panel to conclude that the 48 disputed domain names at issue in this proceeding are probably registered by

the same person or entity, and are under common control. As such, the Panel shall consolidate this
proceeding to include all 48 disputed domain names, and henceforth will refer to “Respondent” as a single

person or entity.

6.2 Merits

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the disputed domain names:

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

(ii)       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. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Panel finds that Complainant has rights in the mark ADANOLA through registration and use demonstrated in the record. The Panel also finds that each of the 48 disputed domain names is confusingly similar to the ADANOLA mark. In each of the disputed domain names, notwithstanding an additional word or words, the ADANOLA mark is clearly recognizable.

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Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each of the disputed domain names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i)        before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii)       you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii)      you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information often primarily within the knowledge or control of the
respondent. Thus, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence
demonstrating rights or legitimate interests in the domain name (although the burden of proof always
remains on the complainant). If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel concludes that Respondent lacks rights or legitimate interests in connection with the disputed domain names. Respondent has not come forward in this proceeding to refute any of the plausible allegations made by Complainant, or challenge any of the evidence put forth by Complainant. It is clear from this undisputed record that Respondent targeted Complainant’s well-known mark to derive income by impersonating Complainant and creating the false impression that Respondent’s website is actually Complainant’s site. Such conduct obviously does not invest Respondent with rights or legitimate interests vis-à-vis the disputed domain names.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For each of the disputed domain names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a domain name in “bad faith”:

(i)        circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii)       that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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(iv)      that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the disputed domain names in bad faith under the Policy. The Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. On this record, the Panel finds it clear that Respondent targeted Complainant’s mark when registering the

disputed domain names, and has used most of the disputed domain names for illegitimate commercial gain
by seeking to divert Internet traffic by free-riding on Complainant’s well-known mark. This constitutes bad

faith registration and use within the meaning of the above-quoted Policy paragraph 4(b)(iv).

In addition, the Panel finds Respondent in bad faith within the meaning of the above-quoted Policy paragraph

4(b)(ii), as Respondent has engaged in a pattern of preclusive registrations.

Complainant has established Policy paragraph 4(a)(iii).

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 <adanola-australia.com>, <adanolaaustralia.com>,
<adanolabrasil.com>, <adanola-canada.com>, <adanolacanada.com>, <adanolaclothing.shop>,
<adanolaclothing.store>, <adanolacz.com>, <adanola-danmark.com>, <adanoladanmark.com>,
<adanoladeutschland.com>, <adanoladubai.com>, <adanolaespana.com>, <adanolafrance.com>,
<adanolagreece.com>, <adanolahoodies.com>, <adanolahoodie.shop>, <adanolahoodies.shop>,
<adanolaindia.com>, <adanola-ireland.com>, <adanolaireland.com>, <adanolaisrael.com>,
<adanolaitalia.com>, <adanola-japan.com>, <adanolajapan.com>, <adanolamexico.com>,
<adanola-nederland.com>, <adanolanederland.com>, <adanola-norge.com>, <adanolanorge.com>,
<adanolanz.com>, <adanolaofficial.store>, <adanolaosterreich.com>, <adanolaphilippines.com>,
<adanolapolska.com>, <adanolaportugal.com>, <adanolaschweiz.com>, <adanolasingapore.com>,
<adanolaspain.com>, <adanolasverige.com>, <adanola-turkiye.com>, <adanolaturkiye.com>,
<adanola-uae.com>, <adanolauae.com>, <adanola-uk.com>, <adanolauk.com>, <adanolausa.com>,

<adanolausastore.com> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: August 29, 2024