Hilldun Corporation v yu la

WIPO Case No. D2024-1298

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hilldun Corporation v. yu la

Case No. D2024-1298

1. The Parties

Complainant is Hilldun Corporation, United States of America (“United States”), represented by

Otterbourg P.C., United States.

Respondent is yu la, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2024.

On March 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 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 (Privacy Guardian org llc) and contact information in the Complaint. The Center sent an email communication to Complainant on April 2, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint 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 Respondent of the Complaint, and the proceedings commenced on April 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2024. Respondent did not submit any response. Accordingly, the Center notified

Respondent’s default on April 24, 2024.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 29, 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.

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4. Factual Background

Complainant is a company based in the United States. For years prior to the registration of the disputed domain name, Complainant has offered factoring and related financial services under its HILLDUN mark. In addition to establishing common law rights to the trade name, Complainant is the owner of United States

Registration for H HILDUN No. 7,061,415 (registered May 23, 2023), a stylized version of Complainant’s

HILLDUN mark for “factory agencies; factory agency services” in International Class 36. Complainant also

owns the registration for the domain name <hilldun.com>, which Complainant uses to communicate with

clients online.

The disputed domain name was registered on March 13, 2024. Although the disputed domain name is not
currently linked to an active website, Complainant has provided unrebutted evidence on record that
Respondent has used the disputed domain name in connection with an email address to impersonate

Complainant and its officers.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s

trademark, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)

Respondent registered and is using the disputed domain name in bad faith.

Specifically, Complainant contends that it owns rights to the HILLDUN mark, which is “well known” in the

apparel industry, for which Complainant provides factoring and related financial services for such companies
as Tommy Hilfiger, Betsy Johnson, and Marc Jacobs.

Complainant contends that Respondent has incorporated the dominant portion of Complainant’s HILLDUN mark into the disputed domain name, with only the addition of a letter “s”—which clients are likely to understand as referencing a plural or possessive form of Complainant’s mark. Complainant contends that

Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is

using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial

gain. In particular, Complainant asserts that Respondent has set up an email address associated with the

disputed domain name, which Respondent has used in a phishing attempt to impersonate Complainant with

Complainant’s current or prospective clients.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the

Policy. The Panel finds that it is. The disputed domain name directly incorporates the Complainant’s

HILLDUN mark, with only the addition of a single letter, “s”. The Panel finds the mark is recognizable within

the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third

Edition (“WIPO Overview 3.0”), section 1.7. Furthermore, numerous UDRP panels have agreed that the

See

addition of a term or letters to a trademark does not prevent a finding of confusing similarity. confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples

that might show rights or legitimate interests in a domain name. These examples include: (i) use of the

domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that

respondent has been “commonly known by the domain name”; or (iii) “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”.

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate

interests in the disputed domain name, and Respondent has no license from, or other affiliation with,
Complainant.

Furthermore, UDRP panels have held that the use of a domain name for illegal activity here, Respondent has used in a phishing attempt to impersonate Complainant, can never confer rights or legitimate interests upon a respondent. WIPO Overview 3.0, section 2.13.

Therefore, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights

or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy, which

Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith.

Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a

complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies inaccurate address information in the record of the registration. The Panel also notes that the disputed

to the complaint. Respondent here used a privacy service and provided false contact information to the

domain name is almost identical to the Complainant’s domain name <hilldun.com>.

Furthermore, Respondent has set up an email address associated with the disputed domain name, which

Respondent has used in a phishing attempt to impersonate Complainant with Complainant’s current or

prospective clients. Panels have held that the use of a domain name for illegal activity here, Respondent
has used the disputed domain name in connection with an email address to impersonate Complainant and
its officers, constitutes bad faith. See WIPO Overview 3.0, section 3.4.

Therefore, the Panel finds sufficient evidence that Respondent registered and is using the disputed domain name in bad faith for purposes of 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 disputed domain name <hillduns.com> be transferred to Complainant.

/Lorelei Ritchie/

Lorelei Ritchie

Sole Panelist
Date: May 13, 2024