AJE IPCO Pty Ltd v xing guanghui

WIPO Case No. D2024-4523

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AJE IPCO PTY LTD v. xing guanghui

Case No. D2024-4523

1. The Parties

The Complainant is AJE IPCO PTY LTD, Australia, represented by Hitch Advisory, Australia.

The Respondent is xing guanghui, China.

2. The Domain Name and Registrar

The disputed domain name <ajeworldwarehouse.shop> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5,
2024. On November 7, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 8, 2024, 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 (P.D.R Solutions (U.S.) LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 8,
2024, 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 on

November 14, 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 the Respondent of the Complaint, and the proceedings commenced on November 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 5, 2024.

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The Center appointed Marilena Comanescu as the sole panelist in this matter on December 10, 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

The Complainant is a women’s clothing and fashion brand established in Australia and with global presence and operations.

The Complainant holds registrations for the AJE mark, such as the following:

- the Australian trademark registration number 1919170 for AJE (word), registered on April 11, 2018, for

goods and services in International Classes 14, 18, 25, and 35; and

- the International trademark registration number 1420499 for AJE (word), registered on July 11, 2018, for
goods and services in International Classes 14, 18, 25, and 35, and designating various jurisdictions

worldwide.

The Complainant, through its group of companies, owns and promotes its goods using the domain names

<ajeworld.com.au> and <ajeworld.com>.

The disputed domain name was registered on September 5, 2024.

When the Panel visited the website under the disputed domain name, it was used in connection with a commercial website, purportedly offering women’s clothing, to low or discounted prices. No disclaimer or visible information regarding the holder of the website was displayed, and the “Contact us” section provided only an email contact address.

5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to its trademark AJE; the disputed domain name is identical and/or substantially similar to the websites held by the Complainant (through its group of companies); the Complainant is an established and widely recognised

women’s clothing and fashion brand with a global presence and operation; the Complainant has been Respondent; the disputed domain name is substantially similar to the Complainant’s websites – indicating a clear and blatant attempt to misrepresent, to the public, that it is part of the Complainant or its business or group or otherwise associated with or endorsed by the Complainant or its business or group.

operating continuously since 2008 selling clothes and other fashion goods under the brand “AJE”; it has
attained a substantial global reputation via digital and online platforms; the evidence adduced above
indicates a clear intention by the Respondent to use the goodwill and prestige garnered by the Complainant’s
brand in an illegitimate attempt at commercial gain; there is no evidence of extended prior use of the

B. Respondent

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

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6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(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 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 the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “world” and “warehouse”, may bear on assessment of the second
and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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 that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel further notes the composition of the disputed domain name, reproducing the Complainant’s
trademark, with additional terms closely related to the activity of the Complainant (i.e., “warehouse” and
“world”), followed by the generic Top-Level Domain “.store”, also related to the Complainant’s retail business.

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In the present case, the Panel therefore finds that the composition of the disputed domain name, together with its content (in relation to online store for women clothing), create a risk of confusion between the disputed domain name and the Complainant. Panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademark particularly because it reproduces the Complainant’s trademark with additional term(s) related to the Complainant’s business, and the Complainant’s trademark and domain names predate the registration of the disputed domain name by about 6 years. Further, the use of the disputed domain name affirms such finding.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the

respondent’s] website or location or of a product or service on [the respondent’s] website or location” is
evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainant’s trademark with additional descriptive terms related to the Complainant’s business and is very similar to the Complainant’s domain names, the website operated under the disputed domain name promotes goods similar to those provided by the Complainant under the AJE trademark, and has no disclaimer, or accurate or clear information about its owner, in this Panel’s view, supports a finding that the Respondent has intended to attract unsuspecting Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated with or related to the Complainant, for the Respondent’s commercial gain.

Further, the Respondent’s failure to provide a response in this proceeding or to put forward any evidence in its favor, in the circumstances of this case, further supports a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of 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 <ajeworldwarehouse.shop> be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: December 16, 2024