Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1....
WIPO Case No. D2023-3621
•07-11-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION Cotton Traders Limited v. Xiao Li (李晓) Case No. D2023-3621
1. The Parties
Complainant is Cotton Traders Limited, United Kingdom, represented by Nexus Solicitors Limited, United
Kingdom.
Respondent is Xiao Li (李晓), China.
2. The Domain Name and Registrar
The disputed domain name <cottontraderssale.com> (the “Domain Name”) is registered with Chengdu West
Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2023. On August 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on August 30, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on August 31, 2023.
On August 30, 2023, the Center informed the parties in Chinese and English, that the language of the registration agreement for the Domain Name is Chinese. On August 31, 2023, Complainant requested English to be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission.
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 Respondent in Chinese and English of the Complaint, and the proceedings commenced on September 6, 2023. In accordance with the
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Rules, paragraph 5, the due date for Response was September 26, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2023.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 24, 2023. 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
Complainant is a United Kingdom-based retailer of clothing and homeware products sold through retail outlets.
Complainant owns several registered trademarks with the COTTON TRADERS mark, including:
| - | United Kingdom registered trademark number UK00900639674 for COTTON TRADERS word and design mark, registered on August 27, 2001; |
| - | United Kingdom registered trademark number UK00002509201 for COTTON TRADERS word and design mark, registered on June 5, 2009; |
| - | United Kingdom registered trademark number UK00909951898 for COTTON TRADERS word and design mark, registered on October 13, 2011; |
| - | United Kingdom registered trademark number UK00003306177 for COTTON TRADERS word and design mark, registered on July 20, 2018; and |
| - | United Kingdom registered trademark number UK00801483939 for COTTON TRADERS word and design mark, registered on January 24, 2020. |
Complainant also owns and operates its main website at <cottontraders.com>, where it conducts much of its online business.
The Domain Name was registered on August 7, 2023, and at the time of filing of the Complaint, it directed to a website which appeared to imitate the look and feel of Complainant’s website, and purported to offer Complainant’s COTTON TRADERS clothing for sale. The Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
A. Complainant
Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for COTTON TRADERS, and that bona fide and well known COTTON TRADERS products and services.
Complainant notes that it has no affiliation with Respondent. Complainant further contends that Respondent is using the Domain Name as a tool to exploit Complainant’s reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name other than
trademark infringement. Further, Complainant contends that Respondent has acted in bad faith in acquiring
and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
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B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submitted its original Complaint in English. In its Complainant, email dated August 31, 2023, and amended Complaint, Complainant submitted its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration
Agreement for the Domain Name is Chinese.
Complainant submits that the English language should be the language for the current proceedings because the content of the website to which the Domain Name reverts was in English; the email address provided for Respondent appears to have an English name; the correspondence which was exchanged with the
Registrar before filing the Complaint was in English; and holding the proceeding in Chinese would cause undue burden on Complainant.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel also notes that the Domain Name does not have any specific meaning in the Chinese language, and that the Domain Name contains Complainant’s COTTON TRADERS trademark in its entirety, and the addition of the letters “sale” to Complainant’s trademark in the Domain Name, all of which indicate that Respondent understands English. The Panel further notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding, nor did Respondent choose to file a Response in Chinese or English.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-
effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into
Chinese and to conduct the proceeding in Chinese.
Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
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Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an
admission that the complainant’s claims are true.
Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with evidence.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the COTTON TRADERS trademarks, as noted above under section 4. Complainant has also submitted evidence which supports that the COTTON TRADERS trademarks are widely known and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the COTTON TRADERS trademarks.
With Complainant’s rights in the COTTON TRADERS trademarks established, the remaining question under
the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain
(“TLD”) in which it is registered (in this case is, “.com”), is identical or confusingly similar to Complainant’s
trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO
Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s COTTON TRADERS trademarks. The use of Complainant’s trademark in its entirety, with the addition of the word “sale”, does not prevent a finding of confusing similarity between the Domain Name and the COTTON TRADERS trademark as it is recognizable
in the Domain Name.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its there is no evidence showing that Respondent has been commonly known by the Domain Name.
COTTON TRADERS trademarks, and does not have any rights or legitimate interests in the Domain Name.
In addition, Complainant asserts that Respondent is not an authorized reseller and is not related to
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, and at the time of filing of the Complaint, it reverted to a website with an online store featuring Complainant’s trademark and logo, purportedly selling Complainant’s COTTON TRADERS branded clothes and accessories and offering these products for sale. The website, which has a similar look and feel to that of Complainant’s website at <cottontraders.com>, offers goods in the same industry as Complainant’s, and could thus mislead Internet users into thinking that the website has been authorized or operated by or affiliated with Complainant. At the time of the Decision, the Domain Name reverted to an error or inactive page. Such use does not constitute a bona fide offering of
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goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on
Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v.
Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.
Moreover, the nature of the Domain Name, including Complainant’s trademark and the term “sale” which refers to COTTON TRADERS products purportedly offered at a discounted price, is misleading and carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name, reinforcing the notion that Respondent was not
using the Domain Name in connection with a bona fide offering.
Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain
Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration
in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your 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 your website or location or of a product or
service on your website or location.”
The Panel finds that Complainant has provided ample evidence to show that registration and use of the
COTTON TRADERS trademarks long predate the registration of the Domain Name. Complainant is also
well established and known. Indeed, the record shows that Complainant’s COTTON TRADERS trademarks
and related products and services are widely known and recognized. In addition, the addition of the term
“sale” to Complainant’s trademark in the Domain Name is directly related to Complainant’s industry and
activities. Therefore, Respondent was aware of the COTTON TRADERS trademarks when it registered the
Domain Name, knew, or should have known that the Domain Name was confusingly similar to Complainant’s
trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods /
Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property
Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
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Further, the registration of the Domain Name incorporating Complainant’s COTTON TRADERS trademark in its entirety suggests Respondent’s actual knowledge of Complainant’s rights in the COTTON TRADERS trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.
In addition, the evidence provided by Complainant indicated that at the time of filing of the Complaint, the Domain Name reverted to a website which purportedly offers products, that is, COTTON TRADERS-branded clothes, which are impersonating Complainant’s business activities. Such use could mislead Internet users into thinking that the website has been authorized, operated by, or affiliated with Complainant, and offered discounted clothing for sale. At the time of the Decision, the Domain Name resolves to an error or inactive page. Such use does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3.
Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking for bona fide and well-known COTTON TRADERS products and services of Complainant or authorized partners of Complainant. The use of the COTTON TRADERS mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Therefore, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s webpage by creating a likelihood of confusion with Complainant’s COTTON TRADERS marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant had further indicated that it was contacted by a member of the public who was following up on the delivery of goods which they had ordered through the Domain Name.
Further, the Panel also notes the failure of Respondent to submit a Response or to provide any evidence of
actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain
Name may be put.
Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and
Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name, <cottontraderssale.com> be transferred to Complainant.
/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: November 7, 2023
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