Dissh Pty Ltd v Xuemei9 Yue

WIPO Case No. D2023-0665

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

DISSH Pty Ltd v. Xuemei9 Yue

Case No. D2023-0665

1. The Parties

The Complainant is DISSH Pty Ltd, Australia, represented by Macpherson Kelley Pty Ltd, Australia.

The Respondent is Xuemei9 Yue, China.

2. The Domain Name and Registrar

The disputed domain name <disshus.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 February 14, 2023. On February 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2023, 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 February 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2023.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 17, 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.

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4. Factual Background

The Complainant was founded in 2001 in Queensland (Australia) and is active in the business of the clothing retail industry. The Complainant also exports to many countries internationally, including the United States of America (“U.S.”) as its next biggest market after Australia. According to the Complaint, the DISSH mark has traded in Australia since 2001 and enjoys renown within Australia and abroad.

The Complainant is the owner of the DISSH PTY LTD mark registered in Australia (registration no. 2176177) on May 6, 2021 for classes 25 and 42. The Complainant also claims common law rights for the DISSH mark stating use since 2001.

The Complainant is also the owner of the domain names <dissh.com.au> in used since February 23, 2011, and <dissh.com> in used since August 24, 2020.

The disputed domain name was registered on August 11, 2022. It resolves to a website that purports to be an online store for the DISSH trademark offering clothes and other products.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the disputed domain name be transferred to the Complainant.

According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the disputed domain name is identical or confusingly similar to the DISSH mark registrations of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name.

Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

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

(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.

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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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1.

The disputed domain name contains the dominant element (“dissh”) of the mark DISSH PTY LTD of the

Complainant with the addition of the word “us” at the end.

The Panel finds a dominant feature of the mark is recognizable within the disputed domain name.

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

Based on the available record, 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 the disputed domain name.

While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

Having reviewed the 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.

The Panel further finds that the composition of the disputed domain name consisting of the Complainant’s mark plus the geographic term “us” carries a high risk of implied affiliation and effectively suggest sponsorship or endorsement by the Complainant.

Additionally, UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1.

Based on the available record, 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.

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The Panel considers that the record of this case reflects that:

- The Respondent domain name resolves to a website that purports to be an online store for the DISSH
trademark offering clothes and other products.

- The Respondent website is using photos, designs, and images from the Complainant’s website
without the Complainant authorization;

- The Respondent website purports to be an online shop of the Complainant located in the U.S. In the
“about us” section of the website at the disputed domain name, it provides that “DISSH USA Online
Shop is an online store […]” however the Complainant has not authorized such an online store; and

- The Respondent is in default.

UDRP panels have held that the use of a domain name for hosting a copycat version of a complainant’s website constitutes bad faith. See WIPO Overview 3.0, section 3.4.

The Panel concludes that the Respondent 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 the Respondent’s website
or location or of a product or service on the Respondent’s website or location. The paragraph 4(b)(iv) of the

Policy is applied here, and see also WIPO Overview 3.0, section 3.1.4.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <disshus.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: March 31, 2023