Hong Kong Sun Rise Trading Limited v Liang Jianhua
WIPO Case No. D2024-4616
•07-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Hong Kong Sun Rise Trading Limited v. Liang Jianhua
Case No. D2024-4616
1. The Parties
The Complainant is Hong Kong Sun Rise Trading Limited, China, represented by Abion AB, Sweden.
The Respondent is Liang Jianhua, China.
2. The Domain Name and Registrar
The disputed domain name <greenworkspromo.com> is registered with Name.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2024. On November 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on November 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2024.
The Center appointed Hong Yang as the sole panelist in this matter on December 17, 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
The Complainant, headquartered in Hong Kong, China, specializes in the wholesale distribution of industrial machinery and equipment. It has wide online presence via social media platforms with a relatively large number of followers and existing company-consumer interactions.
The Complainant is the owner of a number of trademarks containing the wording GREENWORKS in different
jurisdictions, including: United States Registration No. 3851110, for GREENWORKS, registered on
September 21, 2010; Canada Registration No. TMA848508, for GREENWORKS, registered on April 15,
2013; Brazil Registration No. 920357318, for GREENWORKS, registered on June 22, 2021.
The Complainant operates numerous domain names containing its GREENWORKS mark, including
<greenworkstools.com> (since 2009) which redirects to its official website.
The disputed domain name <greenworkspromo.com> was registered on May 23, 2024. The evidence submitted by the Complainant shows that, at the time of filling of the Complaint, the disputed domain name resolved to a website on which the Respondent displays without any authorization the Complainant’s trademark on top of the webpage, copying the Complainant’s green color design and logotype for the mark in the same stylized form. The website purportedly offers products relating to the Complainant, displaying without authorization copyrightable photos the Complainant used for its own products, without any disclaimer or statement about the (lack of) relationship between the Respondent and the Complainant. Most of the products on the website were offered at substantially discounted prices compared with those of the Complainant’s. On the date of this decision, the website under the disputed domain name shows an “About Us” section, where it is claimed that the Respondent is the “Greenworks Sales Store”.
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.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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 Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.
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Although the addition of other terms here (“promo”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name 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 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 the composition of the disputed domain name itself carries a risk of implied affiliation, where the disputed domain name consists of the Complainant’s mark plus the term “promo”, generally recognized as abbreviation of the generic term “promotion”. Panels have held that such composition cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. Further, available record shows that the Respondent is not affiliated or otherwise authorized by the Complainant or held any registration of the GREENWORK mark anywhere. There is no evidence indicating that the Respondent might be commonly known by the disputed domain name.
| to the Complainant. Regarding the possible legitimate offering by resellers or distributors, certain | The disputed domain name resolves to a website where the Respondent purportedly offers products relating Respondent must actually be offering the goods or services at issue”; 2. “The Respondent must use the site to sell only the trademarked goods”; 3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and 4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”. Applying the Oki Data test, the Panel finds that at least the third requirement is not met as the website does not include any disclaimer/statement demonstrating that it does not belong to or is not affiliated with the Complainant. |
| Furthermore, the website under the disputed domain name features the Complaint’s trademark, copying its green color design and logotype in the same stylized form. The website also takes the photos used by the Complainant for its own products. Under the “About Us” section on the website, it claims to be the | |
| “Greenworks Sales Store”. All of those are without any consent or approval from the Complainant. The with or endorsement from the Complainant, effectively impersonating the Complainant. Moreover, most of the purportedly sold products are offered at much lower prices than those from the Complainant. Under an overall assessment of relevant factors, the Panel infers that the products sold on the website are likely counterfeit products. Therefore, the Respondent’s use of the disputed domain name cannot constitute any |
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bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain
name.
Panels have held that the use of a domain name for illegitimate activity here, claimed 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 has used, without any license or authorization the
Complainant’s trademark in full, in the disputed domain name plus the term “promo” which relates to general
sale and marketing. The Complainant’s trademark GREENWORKS is well known in its industry and the
Complainant’s registration and use of its mark well predates the Respondent’s registration of the disputed
domain name, so the Respondent knew or should have known of the Complainant’s mark at the time of
registering the disputed domain name. Panels have consistently found that the mere registration of a
domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a
descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a
presumption of bad faith. WIPO Overview 3.0, section 3.1.4
The available record shows that the disputed domain name resolves to a website featuring the Complainant’s trademark and logo copying its logotype and color design, using the Complainant’s photos of products, as well as copying the Complainant’s identity through claiming to be the store of the Complainant under the “About Us” section, all of which without any consent or approval. Moreover, the Respondent purportedly sells products identical to those of the Complainant, which are likely counterfeit products. It is apparent that the Respondent impersonates the Complainant and targets it to attract Internet users to its website by creating a likelihood of confusion, taking unfair advantage from the Complainant’s reputational trademark.
Panels have held that the use of a domain name for illegitimate activity, here claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name 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 name <greenworkspromo.com> be transferred to the Complainant.
/Hong Yang/
Hong Yang
Sole Panelist
Date: January 7, 2025
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