Cutting Edge Ventures Limited, and Naked Wolfe Footwear Pty. Ltd. v; Ting Wang

WIPO Case No. D2024-0329

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cutting Edge Ventures Limited, and Naked Wolfe Footwear Pty. Ltd. v.
Ting Wang

Case No. D2024-0329

1. The Parties

The Complainants are Cutting Edge Ventures Limited, and Naked Wolfe Footwear Pty. Ltd., Australia
(hereafter “the Complainant” or “the Complainants”), represented by Merkenbureau Knijff & Partners B.V.,

United States of America (“United States”).

The Respondent is Ting Wang, United States.

2. The Domain Name and Registrar

The disputed domain name <nakedwolfe.online> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2024.
On January 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 25, 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 (DETAILS WITHHELD FOR PRIVACY PURPOSES) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 26,
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 amendment to the

Complaint on the same day.

The Center verified that the Complaint together with the amendment to 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 February 2, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 22, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 28, 2024.

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The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 5, 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

It results from the Complainant’s undisputed allegations that it is a family-run business offering luxury fashion footwear, accessories and swimwear for men and women. Naked Wolfe has become a house name for luxury footwear since its launch in 2017.

The Complainant, Cutting Edge Ventures Limited, is the registered owner of many trademarks worldwide for Naked Wolfe, e.g., United States trademark registration no. 5807181, NAKED WOLFE (word) registered on July 16, 2019, for goods in class 18.

In addition, the Complainant uses the following domain name <nakedwolfe.com> in order to promote its products.

The disputed domain name <nakedwolfe.online> was registered on December 22, 2023. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolved to a website displaying the Complainant’s trademark and logo and purportedly offering for sale products under the Complainant’s trademark.

Finally, the Complainant sent a cease and desist letter to the Respondent on January 24, 2024. The

Respondent did not reply to it.

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 to the Complainant’s NAKED
WOLFE trademark since it consists exclusively of the Complainant’s registered trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not received authorisation from the Complainant to use its trademark, nor is commonly known by the disputed domain name, nor is affiliated with the Complainant.

Furthermore, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant also noticed that the Respondent has initially used (the website connected with) this domain name for products and services related to (luxury) fashion / (the offering of) shoes. By doing so, the Respondent clearly attempted to act as (an affiliate of) Complainant. So, the Respondent is clearly

aware of the Complainant’s prestige as a clothing brand. Bad faith use is clear because the Respondent’s
website disputed domain name has been created solely for the purposes of perpetrating fraud to confuse
consumers to visit the Respondent’s fake site to purchase the Respondent’s fake goods. This fact has also

been recognized by multiple third parties, who wrote online warning blogs on this.

B. Respondent

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

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6. Discussion and Findings

6.1 Procedural issues – Consolidation of the Complainants

The Complaint was filed by both Cutting Edge Ventures Limited and Naked Wolfe Footwear Pty. Ltd., which are affiliated entities. In addition, each of the Complainants are individually the owner of registered trademarks for NAKED WOLFE in different jurisdictions. The Complainants requested the disputed domain name be transferred to Naked Wolfe Footwear Pty. Ltd., i.e., the second Complainant.

As set forth in section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.

In light of the above, the Panel finds that the Complainants have a specific common grievance against the Respondent because they share a common legal interest in the trademark rights on which this Complaint is based as a result of their affiliation with the same corporate group. Both Complainants own registrations for the trademark NAKED WOLFE. Against this background, the Panel does not see reasons why a consolidated Complaint brought by the Complainants against a single Respondent would not be fair and equitable. Moreover, the Respondent failed to come forward with any allegations or evidence to object the consolidation. For reasons of procedural efficiency, fairness and equity the Panel therefore accepts the joint Complaint.

6.2 Substantive issues

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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 identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Finally, the Top-Level Domain (“TLD”) “.online” of the disputed domain name may be disregarded under the first element confusing similarity test. WIPO Overview 3.0 at section 1.11.1.

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.

Moreover, the Panel notes that the nature of the disputed domain name carries a high risk of implied affiliation, since the disputed domain name is identical to the Complainant’s trademark NAKED WOLFE and that the trademark NAKED WOLFE is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. Generally speaking, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview 3.0, at section 2.5.1). The Panel shares this view.

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.

One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain name previously resolved to a website displaying without authorization the Complainant’s trademark and logo and purportedly offering for sale products under the Complainant’s trademark. For the Panel, it is therefore evident that the Respondent knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the

disputed domain name included the Complainant’s trademark when it registered the disputed domain name. trademark.

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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.

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the nature of the disputed domain name (a domain name identical to the Complainant’s mark);

(ii) the content of the website to which the disputed domain name directs, displaying the Complainant’s

trademark and logo, and purportedly offering for sale products under the Complainant’s trademark; and

(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of

the disputed domain name.

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, <nakedwolfe.online>, be transferred to the second Complainant

Naked Wolfe Footwear Pty. Ltd.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: March 19, 2024