Clive Holdings, LLC v Jian Gao

WIPO Case No. D2022-4953

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Clive Holdings, LLC v. Jian Gao

Case No. D2022-4953

1. The Parties

The Complainant is Clive Holdings, LLC, United States of America (“United States”), represented by

Stoel Rives, LLP, United States.

The Respondent is Jian Gao, China.

2. The Domain Name and Registrar

The disputed domain name <clive-coffee.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23,

2022. On December 23, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 28, 2022, the Registrar transmitted
by email to the Center its verification response confirming that the Respondent is listed as the registrant and

providing the contact details.

The Center verified that the 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 December 29, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on January 19, 2023.

The Center appointed Edoardo Fano as the sole panelist in this matter on January 26, 2023. 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.

page 2

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the

Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available

means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision

based upon the Complaint, the Policy, the Rules, and the Supplemental Rules, and without the benefit of a
response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Clive Holdings, LLC, a United States company operating as online retailer of coffee machines and related products, owning the following trademark application for CLIVE COFFEE:

- United States Trademark Application No. 97175704 for CLIVE COFFEE, filed on December 16, 2021

(and subsequently registered on January 17, 2023), claiming as first use in commerce October 2008.

The Complainant also operates on the Internet, its website being “ activated in 2008.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on July 7, 2022, and it resolves to a website where coffee machines and related products are purportedly offered for sale and the

Complainant’s official product images and copyrighted marketing materials are reproduced.

On November 30, 2022 the Complainant’s legal representatives sent a cease-and-desist letter to the

Respondent, without receiving any reply.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark CLIVE

COFFEE, as the disputed domain name wholly incorporates the Complainant’s trademark with the addition

of a hyphen between the two terms composing the trademark.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Respondent is using the disputed domain name for a website in which coffee machines and related

products are purportedly offered for sale and the Complainant’s official product images and copyrighted

marketing materials are reproduced, taking advantage of the Complainant’s goodwill and reputation by

making unsuspecting consumers to believe that the Respondent’s website at the disputed domain name is

affiliated with the Complainant.

page 3

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since

the Complainant’s trademark CLIVE COFFEE is known in the field of coffee machines and related products.

Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed

domain name and the Complainant contends that the use of the disputed domain name with the purpose to

attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s

trademark as to an affiliation between the Respondent and the Complainant, qualifies as bad faith

registration and use.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to

paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put
forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

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

(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

The Panel finds that the Complainant is the owner of the trademark CLIVE COFFEE, used during 14 years as unregistered trademark and then applied for registration in United States on December 16, 2021, and that the disputed domain name is confusingly similar to the trademark CLIVE COFFEE. The Panel further notes that the trademark application CLIVE COFFEE has since January 17, 2023 obtained the status of trademark registration.

It is well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically ignored when

assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name

is identical to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

page 4

“(i) before any notice to you 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 (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 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.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of

the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests

in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

difficult, since proving a negative circumstance is generally more complicated than establishing a positive
one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the
The Complainant in its Complaint, and as set out above, has established a prima facie case that the
Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the
Respondent, who is not currently associated with the Complainant in any way, is not using the disputed
domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods

or services. The disputed domain name is used for a website in which coffee machines and related products

are purportedly offered for sale and the Complainant’s official product images and copyrighted marketing

materials are reproduced.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

Should the Complainant’s products sold on the website to which the disputed domain name is directing

Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that

is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to

confusion.

According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the

WIPO Overview 3.0, section 2.8.1:

“[...] resellers, distributors, or service providers using a domain name containing the complainant’s

trademark to undertake sales or repairs related to the complainant’s goods or services may be making

a bona fide offering of goods and services and thus have a legitimate interest in such domain name.

Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific

conditions of a UDRP case:

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

1. the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

page 5

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.

D2001-0903.

While it is unclear to the Panel whether the products offered on the website are genuine, from inspection of

the Respondent’s website, the Panel finds that the lack of any disclaimer and the very low prices of the

coffee machines offered for sale compared to the prices of the Complainant’s official products would not

make, under the Oki Data principles (see above), a bona fide offering of goods and services and thus a
legitimate interest of the Respondent in the disputed domain name.

The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain name along with its use carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “[f]or the purposes of paragraph 4(a)(iii) of the Policy, the following

circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of
the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable

consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or

(ii) [the 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 [the respondent has]

engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain,

Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s]

web site or location or of a product or service on [the respondent’s] web site or location”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s

trademark CLIVE COFFEE in the field of coffee machines and related products is clearly established and the domain name in bad faith, especially because the content of the website to which the disputed domain name resolves consists of purportedly offering for sale the same products as the Complainant.

The Panel further notes that the disputed domain name is also used in bad faith since on the relevant

website products bearing the Complainant’s trademark are offered for sale in an attempt to pass off as a

retailer of the Complainant, an activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed

domain name in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of

the Policy, and to attract, for commercial gain, Internet users to its website in accordance with
paragraph 4(b)(iv) of the Policy.

page 6

Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name,

which includes the Complainant’s trademark in its entirety with the mere addition of a hyphen between

the two terms composing the Complainant’s trademark, further supports a finding of bad faith.

See, WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <clive-coffee.com> be transferred to the Complainant.

/Edoardo Fano/

Edoardo Fano

Sole Panelist
Date: February 6, 2023