Kaemingk B.V. v Meiyan Cai

WIPO Case No. D2023-1609

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Kaemingk B.V. v. Meiyan Cai

Case No. D2023-1609

1. The Parties

The Complainant is Kaemingk B.V., the Netherlands, represented by NLO Shieldmark B. V., the

Netherlands.

The Respondent is Meiyan Cai, China.

2. The Domain Names and Registrar

The disputed domain names <kaemingkchristmas.com>, and <kaemingkdecor.com> are registered with

Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2023. connection with the disputed domain names. On April 14, 2023, 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 (Whois Agent, Domain Protection Services, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2023.

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 the Respondent of the Complaint, and the proceedings commenced on May 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2023.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 9, 2023. The Panel finds

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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 is a Dutch company that has been active since 85 years ago. The Complainant is a supplier of seasonal decorations, including indoor, outdoor and decorative products.

The Complainant products are sold in more than 80 countries around the world. It has offices in the
Netherlands, Germany, Belgium, United Kingdom and the United States.

The Complainant owns various trademark registrations for the term KAEMINGK since the year 2012, in particular:

- European Union Trade mark No. 011201423, registered on April 12, 2013 in relation to the classes 4,
6, 11, 20, 21, 24, 26, 28, and 35;

- United Kingdom Trade mark No. 00911201423, registered on April 12, 2013 in relation to the classes
4, 6, 11, 20, 21, 24, 26, 28, and 35;

- United States Trademark No. 4619147, registered on October 14, 2014 in relation to the classes 4, 6,
11, 14, 15, 19, 20, 21, 24, 26, and 28.

The Complainant owns and uses the domain name <kaemingk.com>.

The disputed domain names were both registered on October 11, 2022. According to the Complaint the disputed domain names resolved to a website offering the Complainant products without its authorization. On December 9 and 29, 2022 the Complainant sent letters to the Registrar and hosting service of the disputed domain names. Following these letters the websites were taken down for several weeks but at the time of filing the Complaint the disputed domain name <kaemingkchristmas.com> was active. Currently the disputed domain names are not in use.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

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(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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds 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 entirety of the mark is reproduced within the disputed domain names. Accordingly, the
disputed domain names are identical or confusingly similar to the mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

While the addition of other terms “christmas” and “decor” to each of the disputed domain names may bear on assessment of the second and third elements, the Panel finds the addition of such terms do 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.

Based on the available record, 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.

While 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 often impossible 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. 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 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.

The Panel considers that the record of this case reflects that:

before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made
demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed

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domain names in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy,
and WIPO Overview 3.0, section 2.2.

The Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain names. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

The record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain names.

Based on the available record, 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.

The Panel considers that the record of this case reflects that:

- the Complainant’s trademark was registered and has been in use since the year 2012;

- the websites attached to the disputed domain names are considered by the Complainant as
fraudulent. The Complaint stated that “customers placing orders through these websites pay but do
receive any of the items ordered”;

- the Complainant received messages from customers that ordered from the disputed domain names
and that were used for fraudulent purposes;

- the disputed domain names were registered both on the same date: October 11, 2022.

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

Panels have 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) 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 names constitutes bad faith under the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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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, <kaemingkchristmas.com>, and <kaemingkdecor.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: June 26, 2023