Hong Kong Sun Rise Trading Limited v Charlie Iqbal and Caitlin Barry

WIPO Case No. D2024-1312

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hong Kong Sun Rise Trading Limited v. Charlie Iqbal and Caitlin Barry

Case No. D2024-1312

1. The Parties

The Complainant is Hong Kong Sun Rise Trading Limited, Hong Kong, China, represented by Abion AB,

Sweden.

The Respondents are Charlie Iqbal and Caitlin Barry, Germany.

2. The Domain Names and Registrar

The disputed domain names <greenworkschile.com>, <greenworkshrvatska.com>, and
<greenworksromania.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2024. connection with the disputed domain names. On March 29, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on April 5, 2024.

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 the Respondents of the
Complaint, and the proceedings commenced on April 9, 2024. In accordance with the Rules, paragraph 5,

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the due date for Response was April 29, 2024. The Respondents did not submit any response. Accordingly,
the Center notified the Respondents’ default on April 30, 2024.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 6, 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

The Complainant, a company with headquarters in Hong Kong, China, is active in the wholesale distribution of industrial machinery and equipment.

The Complainant owns numerous trademark registrations for or including GREENWORKS around the world.
It owns inter alia the following registrations:

- European Union registration for GREENWORKS no. 017163817, registered on November 26, 2020, in classes 7, 9, 11, 12, 17, 21, and 35;

- United States trademark registration for GREENWORKS no. 6615681, registered on January 11,

2022, in classes 7, 9, 11, 12, and 35;

- Hong Kong, China trademark registration for GREENWORKS no. 304420467, registered on May 21, 2019 in classes 7, 9, and 35.

The disputed domain names were registered on December 13, 2023. The named registrant for the disputed domain names <greenworkschile.com> and <greenworkshrvatska.com>, as was disclosed by the Registrar, is Charlie Iqbal. As was disclosed by the Registrar, the named registrant for the disputed domain name

<greenworksromania.com> is Caitlin Barry.

The disputed domain names all resolve to websites with an identical design, which display prominently the Complainant’s trademark, and purportedly offer for sale the Complainant’s goods. The design of such websites is similar to the design of the Complainant’s official website. The websites differ only in the language used, which corresponds to the language of the country mentioned (by name) in each disputed domain name.

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 names.

Notably, the Complainant contends that the disputed domain names are similar to the Complainant’s of a word for a geographical location, which is insufficient to dispel the likelihood of confusion.

The Complainant further contends that the Respondents has no rights or legitimate interests in the disputed domain names for the following reasons: (i) the Respondents has no trademarks rights in the term “greenworks”neither has the Respondents received any license or authorization from the Complainant to use any domain names featuring its trademark; (ii) the Respondents are not commonly known by the distinctive term “greenworks”, or any similar term; (iii) the Respondents have not used, nor prepared to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the disputed domain names carry a risk of implied affiliation with the Complainant.

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Finally, the Complainant contends that the Respondents have used and registered the disputed domain names in bad faith. Given that the Complainant’s rights predate the registration of the disputed domain names and given the Complainant’s online presence, it is likely, according to the Complainant, that the Respondents were aware of the Complainant’s trademark rights at the time of registration of the disputed

domain names. The Complainant asserts that the Respondents are intentionally creating confusion in order
to divert consumers from the Complainant’s websites for commercial gain and phishing, a behavior that

amounts to use in bad faith.

B. Respondents

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)        the domain name registered by the respondent 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 domain name; and

(iii)      the domain name registered by the respondent has been registered and is being used in bad faith.

6.1 Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes the following factors that strongly suggest common control in
the present case: (i) the disputed domain names display the same building pattern: they combine the
trademark GREENWORKS with the name of a country, under the generic Top-Level Domain (“gTLD”)
“.com”; (ii) they have been registered on the same date, namely on December 13, 2023; (iii) they are all
registered with the same Registrar; (iv) all the named registrants have indicated Berlin, Germany as their
residence; (v) all disputed domain names resolve to identical websites which display the Complainant’s
trademarks and logotypes, written in the language of the country mentioned in the disputed domain names at
issue.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

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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. 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 names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here country names (respectively “chile”, “hrvatska” (meaning Croatia in Croatian), and “romania”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 names. The Respondents have not rebutted the Complainant’s prima facie showing and have not come forward with any relevant

evidence demonstrating rights or legitimate interests in the disputed domain names such as those
enumerated in the Policy or otherwise.

In the present case, the Panel observes that the disputed domain names carry a risk of implied affiliation with the Complainant, as they combine the Complainant’s trademark with the name of a geographic location, thus suggesting sponsorship or endorsement by the trademark owner and/or that the disputed domain name in

question corresponds to the Complainant’s official website for the country at issue. See WIPO Overview 3.0,
section 2.5.1.

Furthermore, while the Respondent uses the disputed domain names in connection with commercial websites purportedly offering for sale GREENWORKS branded products, such use (even if averred) cannot be legitimate since its websites are designed to mimic the look and feel of the Complainant’s official websites and thus pass off as official websites. The Panel further notes that the screenshots of the landing page of the websites to which the disputed domain names resolve do not feature any disclaimer concerning the relationship between the Respondent and the Complainant. In the Panel’s view, this demonstrates an obvious attempt on the part of the Respondent to mislead Internet users seeking the Complainant’s services and website. Such being the case, the Respondent cannot be considered to be making a bona fide commercial use of the disputed domain names.

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Panels have held that the use of a domain name for illegal activity here, impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

In the present case, the Panel notes that the Respondent used the Complainant’s logo and trademark on its websites and that the trademark GREENWORKS, which is distinctive, has been widely used before the registration of the disputed domain names. The Panel finds it therefore unlikely that the disputed domain names were chosen independently without reference to the Complainant’s trademark. The Panel therefore accepts that the Respondent was aware of the existence of the Complainant and of its trademarks at the time of the registration of the disputed domain names. The Panel finds accordingly that the disputed domain names were registered in bad faith.

Panels have held that the use of a domain name for illegal activity here, claimed as impersonation/passing off or phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4.

The Respondent used the disputed domain names in connection with active websites with the same look and faith under paragraph 4(b)(iv) of the Policy.

feel as the Complainant’s official websites and reproducing its trademark and logotype. By using the
disputed domain names in such manner, the Respondent tried to pass off as the Complainant. The Panel
finds that in acting so, the Respondent intentionally attempted to attract, for the purposes of commercial gain,
Internet users looking for the Complainant’s official websites, by creating a likelihood of confusion with the

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

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 names <greenworkschile.com>, <greenworkshrvatska.com>, and

<greenworksromania.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: May 20, 2024