Hong Kong Sun Rise Trading Limited v Jennifer Bates, Holly Murray, Anna
WIPO Case No. D2024-1700
•12-08-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Hong Kong Sun Rise Trading Limited v. Jennifer Bates, Holly Murray, Anna
Hyde, Caitlin Barry, Louis Watkins, Charlie Iqbal
Case No. D2024-1700
1. The Parties
The Complainant is Hong Kong Sun Rise Trading Limited, Hong Kong, China, represented by Abion AB,
Sweden.
The First Respondent is Jennifer Bates, Germany.
The Second Respondent is Holly Murray, Germany.
The Third Respondent is Anna Hyde, Germany.
The Fourth Respondent is Caitlin Barry, Germany.
The Fifth Respondent is Louis Watkins, Germany.
The Sixth Respondent is Charlie Iqbal, Germany.
2. The Domain Names and Registrar
The disputed domain names <greenworksargentina.com>, <greenworksaustralia.net>,
<greenworksbelgie.com>, <greenworksbelgique.com>, <greenworksbulgaria.com>,
<greenworkscanada.net>, <greenworkscolombia.com>, <greenworksespana.com>,
<greenworksfrance.com>, <greenworksgreece.com>, <greenworksisrael.com>, <greenworksitalia.com>,
<greenworkskuwait.com>, <greenworkslietuva.com>, <greenworksmagyarorszag.com>,
<greenworksnederland.com>, <greenworksnorge.com>, <greenworksperu.com>,
<greenworksschweiz.com>, <greenworkssk.com>, <greenworkssouthafrica.com>, <greenworkssrbija.com>,
<greenworkssuomi.com>, <greenworkssverige.com>, <greenworksturkiye.com>, <greenworksuae.com>,
<greenworksuk.com>, and <greenworksuruguay.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 April 23, 2024.
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On April 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 25, 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 25, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) 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 25, 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 May 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 23, 2024.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 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.
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 of America 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 disputed domain name are
currently not in use. However, at the time of filing the Complaint they all resolved to websites using the
Complainant trademark GREENWORKS and photos of the Complainant products.
5. Parties’ Contentions
A. Complainant
The Complainant requests the consolidation of the Complaint against the multiple disputed domain names
registrants based on the reasons provided in its Complaint and treats the Respondents in the singular as, the
“Respondent”.
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The disputed domain names are confusingly similar to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The
Respondent has registered and are using the disputed domain names in bad faith.
The Complainant requests the transfer of the disputed domain names.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 that:
| - | All the disputed domain names were registered on the same date. |
- All the disputed domain names resolved to the same content using the Complainant trademark and photos of the Complainant product with no disclaimers, albeit in different language.
| - | While the names of the registrants are different, the address indicates Berlin, Germany in all |
registrations.
- All the disputed domain names were registered with the same Registrar: Alibaba.com Singapore E- Commerce Private Limited.
| - | All the disputed domain names are using the same name servers. |
| - | The Panel also notes the case Hong Kong Sun Rise Trading Limited v. Charlie Iqbal and Caitlin Barry, |
WIPO Case No. D2024-1312, where two respondents, as the ones involved here, registered the domain names <greenworkschile.com>, <greenworkshrvatska.com>, and <greenworksromania.com> sharing the same pattern of composition of the domain name involving the trademark of the Complainant plus geographic place. The respondents were held to registered and used the disputed domain names in bad faith.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
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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.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name:
(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.
The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview 3.0, section 4.3.
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, “Argentina”, “Australia”, “belgie”, “Belgique”, “bulgaria”, “canada”, “Colombia”, “Espana”, “France”, “Greece”, “israel”, “italia”, “kuwait”, “lietuva”, “magyarorszag”, “nederland”, “Norge”, “peru”, “schweiz”, “sk”, “southafrica”, “ srbija”, “suomi”, “sverige”, “turkiye”, “uae”, “uk”, and
“uruguay” 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.
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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 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 names such as those enumerated in the
Policy or otherwise. Moreover, the Panel finds that the composition of the disputed domain names carries a
risk of implied affiliation to the Complainant, which cannot constitute fair use. WIPO Overview 3.0,
section 2.5.1.
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 registration of the Complainant’s trademark pre-dates the registration of the disputed domain |
names by several years;
- The disputed domain names incorporate the Complainant’s trademark in its entirety, with the addition of geographical indicators;
| - | The Respondent is in default; and |
| - | The disputed domain names are currently passively held. |
At the time of filing the Complaint, they all resolved to websites using the Complainant trademark and use of disputed domain names constitutes bad faith under paragraph 4(b)(iv).
Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.
The Panel finds 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 names, <greenworksargentina.com>, <greenworksaustralia.net>,
<greenworksbelgie.com>, <greenworksbelgique.com>, <greenworksbulgaria.com>,
<greenworkscanada.net>, <greenworkscolombia.com>, <greenworksespana.com>,
<greenworksfrance.com>, <greenworksgreece.com>, <greenworksisrael.com>, <greenworksitalia.com>,
<greenworkskuwait.com>, <greenworkslietuva.com>, <greenworksmagyarorszag.com>,
<greenworksnederland.com>, <greenworksnorge.com>, <greenworksperu.com>,
<greenworksschweiz.com>, <greenworkssk.com>, <greenworkssouthafrica.com>, <greenworkssrbija.com>,
<greenworkssuomi.com>, <greenworkssverige.com>, <greenworksturkiye.com>, <greenworksuae.com>,
<greenworksuk.com>, and <greenworksuruguay.com>, be transferred to the Complainant.
/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: June 12, 2024.
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