Goorin Bros., Inc. v li ning
WIPO Case No. D2025-0980
•24-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Goorin Bros., Inc. v. li ning
Case No. D2025-0980
1. The Parties
Complainant is Goorin Bros., Inc., United States of America (“United States” or “U.S.”), represented by
Authentix Inc., United States.
Respondent is li ning, United States.
2. The Domain Name and Registrar
The disputed domain name <goorinbrostruckers.shop> (the “Domain Name”) is registered with Sav.com,
LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2025.
On March 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. On March 11, 2025, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name, which differed from
the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an
email communication to Complainant on March 12, 2025, providing the registrant and contact information
disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
Complainant filed an amended Complaint on March 13, 2025.
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 Respondent of the Complaint, and the proceedings commenced on March 13, 2025. In accordance with the Rules, paragraph 5, the due date for the Response was April 2, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 7, 2025.
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The Center appointed John C McElwaine as the sole panelist in this matter on April 11, 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
Complainant is a global, brand specializing in premium headwear. Founded by Cassel Goorin, the company has been producing high-quality, trendy hats for over a century.
Complainant owns the following trademark registrations relevant to this matter:
| - | GOORIN, U.S. Reg. No. 3293390, registered on September 18, 2007, in Class 25; |
| - | GOORIN, U.S. Reg. No. 3338514, registered on November 20, 2007, in Class 35; and |
| - | GOORIN BROS., U.S. Reg. No. 3825023, registered on July 27, 2010, in Class 25. |
Collectively, these registered trademark rights are referred to herein as the “GOORIN BROS Marks”.
The Domain Name was registered on July 17, 2024. The Domain Name resolves to a website purportedly selling GOORIN BROS products at discounted prices.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.
With respect to the first element of the Policy, Complainant asserts ownership of multiple trademark registrations for the GOORIN BROS Marks. In addition, Complainant alleges it has gained significant common law rights through use, advertisement and promotion of such marks in connection with its premium headwear products. Complainant contends that the Domain Name reproduces the distinctive part of Complainant’s GOORIN BROS Marks and corporate name, GOORIN BROS.
With respect to the second element of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed or authorized Respondent to use its marks. Complainant further asserts that the Domain Name resolves to a website purportedly selling GOORIN BROS branded products at heavily discounted prices while using Complainant’s brand imagery and images without authorization.
With respect to the third element of the Policy, Complainant asserts bad faith registration and use based on Respondent's fraudulent scheme. Complainant asserts that it made two test purchases from the website. For the first purchase in January 2025 via PayPal, Respondent falsely claimed delivery via USPS but no package was received. For the second purchase in January 2025 via credit card, the payment was processed by an unrelated company “UNIQUEDECORFINDS”. The following day, unauthorized charges appeared on Complainant's credit card. The tracking information provided was false, and attempts to contact the carrier were unsuccessful.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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6. Discussion and Findings
Although Respondent defaulted, to succeed in this proceeding, paragraph 4(a) of the Policy requires
Complainant to prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
| within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. | Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated elements are as follows. |
| 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 Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Ownership of a trademark registration prima facie satisfies that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview, section 1.2. On this point, Complainant has provided evidence that it is the owner of trademark registrations for the GOORIN BROS Marks. The Panel also finds the marks are recognizable within the Domain Name and that the addition of the word “truckers”, which is a type of hat made by Complainant, does not prevent a finding of confusing similarity between the Domain Name and the GOORIN BROS Marks. Accordingly, the Domain Name is confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.8. | |
| Based on the available record, the Panel finds the first element of the Policy has been established. | |
| B. Rights or Legitimate Interests | |
| 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. | |
| In this matter, Complainant contends that Respondent is not authorized to register the Domain Name or use the GOORIN BROS Marks, nor does Respondent have any affiliation, association, or connection with Complainant. Rather, Complainant contends Respondent developed a website at the Domain Name using Complainant’s GOORIN BROS Marks and images of Complainant’s products to sell products purporting to be Complainant’s products at discounted prices in a scheme where money is paid for products but they are never delivered to the purchasers. |
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Section 2.13.2 of the WIPO Overview 3.0 provides the following guidance concerning such allegations, even when the respondent is in default: “Evidence that the goods are offered disproportionately below market value, that the goods are only sold under license or through a prescription (especially with pharmaceutical products), that the images of the goods prima facie suggest (e.g., where the relevant logo is distorted) that they are not genuine, that the respondent has misappropriated copyrighted images from the complainant’s website, that the goods are extremely rare, that the goods have prompted consumer complaints, or that a respondent has improperly masked its identity to avoid being contactable, have each been found relevant [to proving a lack of legitimate interest based upon illegal activity].”
Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy1 or otherwise.
Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name and is, instead, known as “li ning”, as was disclosed by the Registrar. The Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name, which adopts Complainant’s GOORIN BROS Marks in furtherance of Respondent’s scheme to deceive Internet users into believe that Respondent is Complainant or an authorized retailer for Complainant’s products. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the respondent’s name is ‘Bestinfo’ and that it can therefore not be commonly known by the Domain Name.”)
Respondent cannot claim that its operation of the website at the Domain Name provides legitimate interests because the Panel finds that the Domain Name was likely registered and is being used to engage in a scheme to defraud customers of Complainant, which is not a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically 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. Even if the products sold by Respondent were genuine and delivered to purchasers (which is highly unlikely given the circumstances mentioned above), such use of the Domain Name does not meet the requirements set forth in “Oki Data Test”, because the site does not disclose the lack of relationship between Respondent and Complainant. WIPO Overview 3.0, section 2.8.
Moreover, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is, at best, selling competing products from an online retail website. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair use.
Lastly, the composition of the Domain Name, particularly the inclusion of the GOORIN BROS Marks and the addition of the word “truckers”, which is a type of hat made by Complainant, carries a high risk of implied affiliation with Complainant.
The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that
Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
1 The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or
legitimate interests in a contested domain name: “(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.”
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C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s
trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest.
See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722.
Here, the evidence demonstrates that Respondent registered the Domain Name as part of a sophisticated scheme to sell products at discounted prices of Complainant and engage in fraud. Respondent’s website copies Complainant's brand imagery and images to support and accomplish this fraud. When Complainant
attempted test purchases, Respondent engaged in a pattern of deceptive conduct, including false shipping Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, Complainant’s claim concerning Respondent’s scheme is undisputed.
claims, processing payments through an unrelated company, and making unauthorized charges to
As discussed herein, Respondent used the Domain Name in connection with a website using Complainant’s GOORIN BROS Marks in a manner to trick consumers into believing that Respondent’s website was legitimate. The creation of a likelihood of confusion amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Moreover, the fraudulent activity using Complainant’s trademark as a part of the Domain Name constitutes a disruption of Complainant’s business and also establishes bad faith registration and use. See Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.)
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the GOORIN BROS Marks as to the source, sponsorship, affiliation, or
endorsement of its website or location or of a product or service on its website or location. Thus, the Panel
holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is
using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <goorinbrostruckers.shop>, be transferred to Complainant.
/John C McElwaine/
John C McElwaine
Sole Panelist
Date: April 24, 2025
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