DS Smith Limited v YIWEI REN

WIPO Case No. D2025-2063

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

DS Smith Limited v. YIWEI REN

Case No. D2025-2063

1. The Parties

The Complainant is DS Smith Limited, United Kingdom, represented by CSC Digital Brand Services Group

AB, Sweden.

The Respondent is YIWEI REN, China.

2. The Domain Name and Registrar

The disputed domain name <dssmith.biz> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2025. On May 26, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On May 27, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email

communication to the Complainant on May 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 f iled an amended Complaint on May 27, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the

Complaint, and the proceedings commenced on May 28, 2025. In accordance with the Rules, paragraph 5,

the due date for Response was June 17, 2025. The Respondent did not submit any response.
Accordingly, the Center notif ied the Respondent’s default on June 20, 2025.

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The Center appointed Zeynep Yasaman as the sole panelist in this matter on July 1, 2025.	The Panel f inds
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, DS Smith Limited, is a multinational company and operates in corrugated packaging with emphasis on state-of -the-art packaging design.

The Complainant, formerly DS Smith PLC, is the owner of numerous registered trademarks in various jurisdictions. Some of the Complainant’s trademark registrations include:

- United Kingdom trademark D S SMITH, Registration no. UK00902327617, registered on December 19,
2002, in classes 1, 2, 7, 9, 16, 17, 19, 20, 35, 39, and 40.
- United Kingdom trademark DS SMITH, Registration no. UK00917928906, registered on January 17, 2019,
in classes 35, 40, 42, and 44.
- European Union trademark D S SMITH, Registration no. 002327617, registered on December 19, 2002, in
classes 1, 2, 7, 9, 16, 17, 19, 20, 35, 39, and 40.
- European Union trademark DS SMITH, Registration no. 017928906, registered on January 17, 2019, in
classes 35, 40, 42, and 44.
- International trademark D S SMITH, Registration no. 1089169 (designating the United States of America),
registered on April 26, 2011, in classes 7, 16, and 20.
- United States trademark DS SMITH, Registration no. 6406061, registered on July 06, 2021, in classes 35,

40, and 44.

The Complainant operates under the domain name <dssmith.com>, which was registered on January 14,
2003.

The disputed domain name <dssmith.biz> was registered on December 2, 2024, and redirects to a GoDaddy page where the disputed domain name is available for sale for USD 950.

Prior to f iling the Complaint with WIPO, the Complainant submitted cease-and-desist letters to the received.

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 second-level domain of the disputed domain name consists of the Complainant’s trademarks, resulting in a domain name that is identical or confusingly similar to the Complainant’s D S SMITH and DS SMITH trademarks, that the Respondent’s omission of the space(s) does nothing to distinguish the disputed domain name f rom Complainant’s trademarks.

The Complainant argues that while the Complainant has the ownership and exclusive rights on D S SMITH and DS SMITH trademarks, the Respondent is not sponsored by or af f iliated with the Complainant in any way, nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. Moreover, the Complainant asserts that the Respondent is not

commonly known by the disputed domain name.

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According to the Complainant, the fact that the Respondent was using a privacy WhoIs service at the time of f iling the Complaint equates to a lack of legitimate interest. Moreover, the Respondent registered the disputed domain name on December 2, 2024, which is signif icantly af ter the Complainant’s trademark registrations, the Complainant’s registration of its primary domain name <dssmith.com>, and the

Complainant’s first use in commerce of its trademarks, and thus, by the time Respondent registered the disputed domain name, the Complainant already had a worldwide reputation in its trademarks. In addition, the Respondent’s registration of the “.biz”, a generic Top-Level Domain (“gTLD”) designed for business websites, is prima facie likely to signal to the Internet users that the online location is where one can find the Complainant’s business. Therefore, it is evident that the disputed domain name carries a high risk of implied affiliation with the Complainant, which cannot be considered a fair use of the disputed domain name.

Furthermore, the Complainant indicates that the disputed domain name redirects to a website where it is being offered for sale, with no other content. In this regard, the Complainant argues that of fering the disputed domain name for sale while inactively holding the disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

Regarding bad faith registration and use of the disputed domain name, the Complainant asserts that by registering a domain name that fully incorporates the Complainant’s internationally known trademarks, the Respondent has created a domain name that is identical or confusingly similar to the Complainant’s

trademarks, as well as its <dssmith.com> domain name, which shows the Respondent knowledge of and familiarity with Complainant’s brands and business. Moreover, the fact that the Respondent is using the disputed domain name to redirect users to a website where it is of fered for sale constitutes bad faith.

According to the Complainant, the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source, and the Respondent has the intention to hold the disputed domain name for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant. Moreover, the facts that the Respondent employed a privacy service to hide its identity at the time of filing of the Complaint and that it has previously been involved in prior UDRP cases provide evidence of the Respondent’s pattern of cybersquatting.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. In the present case, the Panel notes that the Complainant owns several registered DS SMITH and D S SMITH trademarks. Accordingly, the Complainant has shown rights in respect of a

trademark or service mark for the purposes of the Policy.

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 applicable gTLD in a domain name (in this case “.biz”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

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In the present case, while the Complainant’s trademarks consist of DS SMITH and D S SMITH, the disputed domain name is <dssmith.biz>. Therefore, 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.

The Panel f inds the f irst 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. These are as follows:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the
domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

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 of ten 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 notes that there is no evidence suggesting that the Respondent could be commonly known by the disputed domain name within the meaning of the Policy. Moreover, since the disputed domain name, identical to the Complainant’s trademark, is offered for sale on GoDaddy, it is not being used in connection with a bona f ide of fering of goods or services.

Furthermore, the Complainant has established that the Respondent is neither affiliated with the Complainant nor authorized or licensed to use the DS SMITH or D S SMITH trademarks or register the disputed domain name. The Panel notes that the composition of the disputed domain name itself carries a risk of implied af f iliation, given that it is identical to the Complainant’s trademark. Such a composition cannot constitute

fair use as it suggests sponsorship or endorsement by the trademark owner.	WIPO Overview 3.0, section
2.5.1.
The Panel f inds the second element of the Policy has been established.

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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:

(i) circumstances indicating that 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 that complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii) that 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) that the respondent has registered the domain name primarily for the purpose of disrupting the business
of a competitor; or

(iv) that by using the domain name, the respondent has intentionally attempted 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, af f iliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.

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.

In the present case, the Panel notes that the Complainant’s trademarks predate the disputed domain name and the Complainant is an internationally recognized company that has won numerous awards in its f ield of activity. Moreover, the disputed domain name <dssmith.biz> which incorporates fully the Complainant’s trademark DS SMITH, with the addition of gTLD “.biz” creates a likelihood of confusion with the Complainant. In this regard, the Panel finds that the Respondent, having in mind the Complainant’s market reputation, registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark.

The Panel considers that the Respondent’s only use of the disputed domain name has been to of fer it for sale, which can also serve as evidence of bad faith registration and use.

In the present case, taking into account the Complainant’s multinational level of activity, the identity of the disputed domain name with the Complainant’s trademark, the Respondent’s sole use of the disputed domain name for offering it for sale after registration, the Respondent’s failure to submit a response or evidence of any good-faith use, its concealment of identity via a proxy service, and the fact that the Respondent was party as a respondent to other UDRP cases, where the panels found in favor of the complainant and ordered the transfer of the said domain names, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith.

The Panel f inds that the Complainant has established the third element of the Policy.

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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 <dssmith.biz> be transferred to the Complainant.

/Zeynep Yasaman/
Zeynep Yasaman
Sole Panelist
Date: July 15, 2025