Mel Bernie and Company, Inc. v dawei zhao

WIPO Case No. D2025-3457

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mel Bernie and Company, Inc. v. dawei zhao

Case No. D2025-3457

1. The Parties

The Complainant is Mel Bernie and Company, Inc., United States of America (“United States”), represented by Stubbs Alderton & Markiles, LLP, United States.

The Respondent is dawei zhao, China.

2. The Domain Name and Registrar

The disputed domain name <1928jewelryshop.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2025.
On August 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 28, 2025, 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 (Dynadot Inc.) and contact information in the Complaint. The
Center sent an email communication to the Complainant on August 29, 2025, providing the registrant and
contact information disclosed by the Registrar, and requested the Complainant to submit an amended

Complaint. The Complainant filed an amended Complaint on August 29, 2025.

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 Respondent of the Complaint, and the proceedings commenced on September 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2025.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 26, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 major US jewelry manufacturer and seller established in 1968. The Complainant is the owner of registered trademarks in, among others, the marks 1928 and 1928 JEWELRY COMPANY:

- United States Trademark No. 1210421 for 1928, registered on September 28, 1982, in International

Class 14;

- United States Trademark No. 1788084 for 1928 JEWELRY COMPANY, registered on August 17,

1993, in International Class 14;

-	United States Service Mark No. 2688523 for 1928 JEWELRY COMPANY, registered on February 18,
2003.

In addition, the Complainant owns a domain name containing the 1928 mark, namely <1928.com>.

The disputed domain name was registered on May 17, 2024, well after the Complainant secured rights in the marks 1928 and 1928 JEWELRY COMPANY. The disputed domain name is not currently in use. However, previously, the disputed domain name resolved to a look-a-like website of the Complainant’s official 1928

website. The look-a-like website prominently featured the same 1928 logo as used on the Complainant’s
official website in the header of each web page. Furthermore, the overall page layout, design and color
scheme were all very similar to that of the Complainant’s official 1928 website. Moreover, the look-a-like
website purported to sell 1928 branded jewelry at discounted prices, using the official 1928 product names

as well as product photos copied from the Complainant’s official website.

The Respondent appears to be a private individual based in China.

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.

With respect to the first element, the Complainant contends that it has rights in the mark 1928 and that the disputed domain name is confusingly similar to this mark. The Complainant puts forward that the disputed domain name merely adds the descriptive wording “jewelryshop” which only adds to the likelihood of

consumer confusion when they search for Complainant’s online jewelry shop.

Regarding the second element, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant notes that they have not licensed or otherwise authorized the Respondent to sell the Complainant’s products, to use the 1928 mark, or to use the disputed domain name. The Complainant also confirms that, to the best of their knowledge, the Respondent (i) does not use or make any demonstrable preparations to use the disputed domain name with the bona fide offering of goods or services; and (ii) is not or has not been commonly known by the disputed domain name, or the name “1928jewelryshop”. The Complainant contends that the use of the disputed domain name for a look-a- like website of the Complainant’s official website does not amount to legitimate noncommercial or fair use of the disputed domain name.

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As to the third element, the Complainant claims that the Respondent was aware of the Complainant’s marks since the Respondent copied product photographs and product names from the Complainant’s website onto their look-a-like website and also used the 1928 mark on their website’s headers.

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 the trademark 1928 as well as the trade- and service mark

1928 JEWELRY COMPANY for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the 1928 mark is reproduced 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.

Moreover, the Panel finds the 1928 JEWELRY COMPANY 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.

Although the addition of other terms, here “shop”, 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.

Finally, as for the applicable gTLD “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

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

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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 finds that the Respondent has not made a legitimate noncommercial or fair use of the disputed
domain name. The disputed domain name previously resolved to a look-a-like website of the Complainant’s
official website, which purports to offer discounted 1928 products. The look-a-like website prominently
featured the same 1928 logo containing the 1928 trademark in the web page headers of the website.
Furthermore, the overall page layout, design and color scheme were all very similar to that of the
Complainant’s official 1928 website. Moreover, the look-a-like website purported to sell 1928 branded
jewelry at discounted prices, using the official 1928 product names as well as product photos copied from the
Complainant’s official website. This kind of use of the disputed domain name does not represent a bona fide
offering and does not support rights or legitimate interests in the disputed domain name.

WIPO Overview 3.0, section 2.9.

Moreover, 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.

Finally, the Complainant confirmed that they have not licensed, authorized, or permitted the Respondent to
register domain names incorporating the Complainant’s trademarks. The Panel has taken note of the
Complainant’s confirmation in this regard and has not seen any evidence that would suggest the contrary. In
the absence of any license or permission from the Complainant to use its trademarks, the composition of the
disputed domain name, and the fact that the disputed domain name resolves to a look-a-like version of the
Complainant’s 1928 website, no actual or contemplated bona fide or legitimate use of the disputed domain
name could reasonably be claimed (see, e.g., Sportswear Company S.PA. v. Tang Hong, WIPO Case No.
D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure

Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

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 intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks (Paragraph 4(b)(iv) of the Policy). The disputed domain name previously resolved to a look-a-like website of the Complainant’s official website, which purports to sell 1928 products at discounted prices. These circumstances, in combination with the Respondent’s clear absence of rights or legitimate interests in the disputed domain name, are strong indicators of bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel believes that the Respondent knew or, at least, should have known at the time of registration that
the disputed domain name included the Complainant’s 1928 and 1928 JEWELRY COMPANY trademarks.
As demonstrated by the Complainant, these trademarks were registered many years before the registration
of the disputed domain name. Furthermore, the disputed domain name incorporates the 1928 trademark in
its entirety and part of the 1928 JEWELRY COMPANY trademark and includes the merely descriptive term
“shop”. Moreover, the disputed domain name previously resolved to a look-a-like website of the
Complainant’s official 1928 website. This indicates that the Respondent had the Complainant and its

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trademarks in mind when registering the disputed domain name. The Respondent’s knowledge of the accordingly also be inferred from these circumstances. WIPO Overview 3.0, section 3.2.2.

Furthermore, panels have held that the use of a domain name for illegitimate activity, here claimed impersonation/passing off of the Complainant, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Accordingly, 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 <1928jewelryshop.com> be transferred to the Complainant.

/Benoit Van Asbroeck/
Benoit Van Asbroeck
Sole Panelist
Date: October 10, 2025