MZ Wallace, Inc. v na, Zhang Fei and Li Ming

WIPO Case No. D2025-1579

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

MZ Wallace, Inc. v. na, Zhang Fei and Li Ming

Case No. D2025-1579

1. The Parties

The Complainant is MZ Wallace, Inc., United States of America (“United States” or “U.S.”), represented by

Vedder Price P. C., United States.

The Respondents are na, Zhang Fei, China; and Li Ming, China.

2. The Domain Names and Registrars

The disputed domain name <mzwallaceoutletonline.com> is registered with Dominet (HK) Limited.

The disputed domain name <mzwallacesoutletonline.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2025, 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 Respondents (Domain Admin, Privacy Protect, LLC; N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, 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 May 6, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 5, 2025.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 12, 2025. 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 is a retailer of bags and decorative items such as handbags, tote bags, satchels, travel bags, wallets, purses and tassels throughout the United States and its territories. Since April 2000, the Complainant has conducted business under the MZ WALLACE trademarks in the United States in relation to its bags etc.

The Complainant has registered and continuously used multiple trademarks incorporating the wording “MZ
WALLACE” since at least April 14, 2015, including MZ WALLACE as such, U.S. Reg. No. 5,550,328,
registered on August 28, 2018 in International Classes (“IC”) 18 and 26; MZ WALLACE as such, Chinese
Reg. No.: 3644503, registered on January 7, 2006 in IC 18; and MZ WALLACE as such, European Union

Reg. No.: 010903541, registered on September 14, 2012 in IC 18.

The Complainant has its official website at domain name <mzwallace.com>.

According to the Complainant, a single Respondent owns and controls both disputed domain names.

At the time of writing access to websites to which the disputed domain names resolve is blocked for security
reasons. At a time, the Complainant accessed them, they linked to one website that mimicked the
Complainant’s website.

The disputed domain name <mzwallacesoutletonline.com> was registered on May 6, 2024; and disputed domain name <mzwallaceoutletonline.com> on October 12, 2023.

5. Parties’ Contentions

A. Complainant

The Complainant submits that both disputed domain names are under common control.

Notably, the Complainant contends that at the time of filing the Complaint and the First Amended Complaint, the domain name <mzwallaceoutletonline.com> redirected to <mzwallacesoutletonline.com>, so that the same website was displayed at each domain name. The Complainant says that previous panels have found that this points to multiple domain names being under common ownership and control. The Complainant also says that the disputed domain names are nearly identical, with the mere difference being the letter “s” after the Complainant’s trademark and points out that both disputed domain names were last updated within months of each other, <mzwallacesoutletonline.com> on July 6, 2024 and <mzwallaceoutletonline.com> on October 8, 2024.

The Complainant further contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

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The Complainant contends that its registered trademark MZ WALLACE is fully incorporated in both disputed domain names. The additional wording in each domain name is generic and, rather than reducing the risk of confusion, in fact increases it. The Complainant adds that each of the disputed domain names has MZ WALLACE as its dominant distinctive element. The additional term “outlet” combined with “online” points to a digital marketplace, and this is the business the Complainant says it carries on itself. Therefore, the

Complainant contends that both disputed domain names are nearly identical and confusingly similar to its MZ
WALLACE registered trademarks.

The Complainant points out that it did not authorize or grant the right for its MZ WALLACE trademarks to be used by the Respondent in any way. The Complainant contends that the Respondent’s use of the disputed domain names is intended for commercial gain apart from any reasonable fair use. It says that the

Respondent has no rights in the MZ WALLACE trademark generally or specifically in the disputed domain names, as the Respondent adopted the domain names solely to trade off the Complainant’s goodwill in its registered and distinctive MZ WALLACE trademarks. The webpage appearing at
<mzwallacesoutletonline.com> (to which the domain name <mzwallaceoutletonline.com> also redirects) described, at the time the Complainant relevantly accessed it, the Respondent’s services with the deliberate purpose of attracting consumers to the site who mistakenly believe that it is associated with the Complainant, so the latter contends. The Complainant argues that this mistaken belief is generated by the Respondent’s reference to, inter alia, its description of itself as “MZ WALLACE NEW YORK” and
“mzwallacesoutletonline.com” throughout the entirety of its website; its direct copying of the Complainant’s
images of its products, with several images on the Respondent’s website being identical to the
Complainant’s; and the Respondent’s direct copying of the Complainant’s product names and descriptions.

Further, the Complainant contends that the Respondent deliberately selected domain names that fully incorporate its MZ WALLACE mark as a dominant portion to falsely suggest to the public that the Respondent is somehow associated with the Complainant (which the Respondent is not). The Complainant says that the Respondent’s actions in relation to the website established at the disputed domain names demonstrate that it had actual knowledge of the Complainant and the Complainant’s MZ WALLACE trademark at the time it registered the disputed domain name.

In terms of bad faith use, the Complainant points out that nearly all of the images shown at the website for the disputed domain names are directly copied from the Complainant’s website at <mzwallace.com>. In addition to the product images, the Respondent copied product names and descriptions from the

Complainant’s website, according to the latter.

B. Respondent

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

6. Discussion and Findings
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.

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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 at the time the Complainant accessed them, both domain names resolved to the same website (in other words, one was redirected to the same website as the other resolved to). The Complainant also points to the near identical nature of both domain names (only varying by one ‘s’), and the fact that both disputed domain names were renewed on close dates. The Panel

additionally notes that in both cases, registrant information appears nonsensical and false.

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.

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 Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark MZ WALLACE registered by the Complainant for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 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.

The Complainant has not authorized the use of its MZ WALLACE registered trademark by the Respondent in any way, and there is nothing to indicate that the Respondent is known by anything resembling that mark or

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by the disputed domain names.

Panels have held that the use of domain names for the purpose of establishing shadow websites that replicate key elements of a Complainant’s official web presence 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 has already decided that the two disputed domain names are under the common control of a single Respondent. That further reinforces the robust inference that at the time of registration, the Respondent was well aware of the Complainant’s business carried on under the MZ WALLACE trademark, and of its exclusive rights in that mark in relation to the goods for which it is registered. That inference is further strengthened by the fact that the Respondent also chose to incorporate the terms ‘online’ and ‘outlet’ in both disputed domain names.

The Complainant has also demonstrated that both disputed domain names resolved or linked to a website that mimicked or shadowed the Complainant’s official website and web presence. Since the Respondent was not authorized to establish or carry on business with such a website by the Complainant, the former acted in bad faith by establishing the said website and making it available to Internet users. The intention behind the registration of the disputed domain names and the establishing of the relevant website was

clearly to mislead Internet users into thinking it was connected to the Complainant, and hence to take unfair

advantage of the Complainant’s reputation as vested in its registered MZ WALLACE trademarks.

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 <mzwallaceoutletonline.com> and <mzwallacesoutletonline.com> be transferred to the Complainant.

/WiIliam A. Van Caenegem/
WiIliam A. Van Caenegem
Sole Panelist
Date: June 26, 2025