Anodyne, LLC v 张顺金 (Shun Jin Zhang)
WIPO Case No. D2025-1225
•18-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Anodyne, LLC v. 张顺金 (Shun Jin Zhang)
Case No. D2025-1225
1. The Parties
The Complainant is Anodyne, LLC, United States of America, represented by Hill Ward Henderson, P.A.,
United States of America (“United States”).
The Respondent is 张顺金 (Shun Jin Zhang), China.
2. The Domain Name and Registrar
The disputed domain name <anodyne-shoes.com> is registered with Cloud Yuqu LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2025. On March 26, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2025, 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 (John Doe) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2025, 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 March 28, 2025.
On March 27, 2025, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On March 28, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.
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 Chinese and English of the Complaint, and the proceedings commenced on April 4, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2025.
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The Center appointed Sok Ling MOI as the sole panelist in this matter on May 5, 2025. 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, established in the United States in 2015, is a manufacturer and supplier of therapeutic footwear and inserts. It has been offering orthopaedic shoe products under the ANODYNE marks since at least December 31, 2015.
The Complainant owns the following trade mark registrations for the ANODYNE mark:
United States Trademark (“TM”) Registration No. 4,943,091
Mark: ANODYNE Goods: Class 10 - medical devices, namely, diabetic footwear Registration Date: April 19, 2016
| United States TM Registration Number: 6,644,255 Mark: ANODYNE |
| Goods: Class 10 - medical devices, namely, diabetic footwear |
| Registration Date: February 15, 2022 |
| International TM Registration Number: 1,607,359 (designating Australia, Canada)
Mark: ANODYNE |
| Goods: Class 10 - medical devices, namely, diabetic footwear |
| Registration Date: June 18, 2021 |
The Complainant registered the domain name <anodyneshoes.com> on January 20, 2015, and has been using it to operate a webpage offering for sale its shoe products.
The Respondent registered the disputed domain name on November 22, 2024, and used it to operate a webpage offering shoe products under the ANODYNE brand.
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 Complainant’s ANODYNE mark is presumed inherently distinctive by virtue of it being a registered trade mark in the United States; |
| - | the Respondent is operating the disputed domain name to sell identical goods in territories where the Complainant has rights, and this amounts to trade mark infringement; |
| - | the Respondent has taken the Complainant’s ANODYNE mark and merely inserted a hyphen between “ANODYNE” and “SHOES”, and this is a clear case of typo-squatting. |
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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6. Discussion and Findings
6.1 Procedural Issue - Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the disputed domain name is in English and that the Respondent’s webpage is presented in English.
The Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
In this case, the Panel notes that the disputed domain name comprises the English word “shoes”. The Panel further notes that the website to which the disputed domain name resolved contains English contents. Furthermore, the Respondent has been informed by the Center that it would accept a Response in either English or Chinese, but it did not file a formal Response. As such, the Panel finds that no foreseeable procedural benefit may be served by requiring the Complaint to be translated into Chinese and for Chinese to be the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Issue - Findings
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark
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.
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 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.
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Although the addition of other terms (namely, the hyphen symbol “-“ and the English word “shoes”) 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.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ANODYNE mark or to seek registration of any domain name incorporating the ANODYNE mark. The Respondent appears to be an individual by the name of “张顺金 (Shun Jin Zhang)”. There is no evidence suggesting that the Respondent is commonly known by the name “Anodyne” or has any rights in the term “Anodyne”.
Additionally, the Complainant claims that the Respondent’s webpage is a near-identical replica of the Complainant’s webpage, using exact images that the Complainant uses on its webpages, and purporting to offer similar products. This, according to the Complainant, is an attempt to mislead consumers and divert the Complainant’s customers to the Respondent’s webpage.
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.
Moreover, the composition of the disputed domain name, using the Complainant’s trademark plus a hyphen and the term “shoes”, carries a risk of implied affiliation. UDRP 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 Respondent registered the disputed domain name
<anodyne-shoes.com> on November 22, 2024, several years after the Complainant registered its domain
name <anodyneshoes.com> on January 20, 2015, and registered its first trade mark for ANODYNE on
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April 19, 2016. The Panel notes that the word “anodyne” has a dictionary meaning of “a pain relief drug” or “something that soothes and comforts”, but accepts that the ANODYNE mark has acquired distinctiveness as badge of origin through the Complainant’s use over the years. Even though the Respondent appears to be based in China and it is not known whether the Complainant has business operations or secured trade mark registration for its ANODYNE mark in China, it is implausible that the Respondent was not familiar with the Complainant’s ANODYNE mark and domain name especially since the Respondent’s webpage uses images of shoe products which are identical with those used by the Complainant to identify its shoe products on its webpage. The Respondent did not dispute the Complainant’s contentions.
By registering the disputed domain name which is almost identical to the Complainant’s domain name (differing only by the addition of a hyphen between “anodyne” and “shoes”) and offering similar products as the Complainant, the Respondent is attempting to attract Internet users to the Respondent’s webpage by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s webpage. The circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable. Accordingly, the Respondent’s choice, registration and use of the disputed domain name are in bad faith.
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 <anodyne-shoes.com> be transferred to the Complainant.
/Sok Ling MOI/
Sok Ling MOI
Sole Panelist
Date: May 18, 2025
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