Paladin Brands Group, Inc. v Sawyer Sun

WIPO Case No. D2024-0701

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Paladin Brands Group, Inc. v. Sawyer Sun

Case No. D2024-0701

1. The Parties

The Complainant is Paladin Brands Group, Inc., United States of America (“US”), represented by Nyemaster

Goode, P.C., US.

The Respondent is Sawyer Sun, China.

2. The Domain Name and Registrar

The disputed domain name <usapaladinindustrial.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2024. On February 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2024, 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 (Redacted for Privacy, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2024, 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 amended Complaint on February 28, 2024.

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 February 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2024. The Respondent did not submit a formal response. However, an email was received from the Respondent, wishing to explore settlement options. Accordingly, Notification of Suspension email was sent on March 14, 2024, the proceeding was suspended until April 14, 2024. Per the Complainant’s request, the proceeding was further suspended until June 8,

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2024, September 27, 2024, and November 1, 2024. The proceeding was reinstituted on October 31, 2024. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 11, 2024.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 18, 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.

4. Factual Background

The Complainant is an IP-holding company of the Paladin group of companies, which manufactures coupler systems and attachment tools for machinery across a variety of industries.

The Complainant notably owns the word US Trademark PALADIN No. 4,598,255, that was registered on
September 2, 2014 in classes 7, 40 and 42 with a first use in commerce dated August 31, 2013.

The Complainant further owns the domain name <paladinattachments.com> which it uses to market its products online.

The disputed domain name was registered on May 6, 2020. The disputed domain name directs to a website selling products competing with the Complainant’s ones and bearing a logo incorporating the Complainant’s PALADIN trademark, which would be exploited by a company named “Paladin Industrial Corporation

Limited”, seated in Canada. No such company however seems to be located at the given address or even exist.

In 2018, the Complainant has already faced a legal dispute against a company name “Paladin Industrial Corporation Limited”, which was then selling competing products under the domain name <paladinindustrial.cc>. After having sent on December 14, 2018 a cease and desist letter to that company’s representative, the latter complied; it deleted the domain name <paladinindustrial.cc> and changed it in favor of <usawolverine.com>. The domain name <usawolverine.com>, which relates to a website that is still active, is held by the current Respondent in these proceedings.

On February 19, 2024, an account manager with Stanley Black & Decker, Inc. (the Complainant’s parent company) received an email from a prospective customer seeking price information for a product the customer described as a “Paladin Dirt Screen.” The customer’s email referenced a hyperlink to a product page on the Respondent’s website.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its trademark
PALADIN as such trademark is clearly recognizable in the disputed domain name as the prevailing element.

The Complainant further affirms that the Respondent has no rights or legitimate interests in the disputed domain name as it not known under that name and has never been authorized by the Complainant to use the PALADIN trademark in any way. The use made by the Respondent of the disputed domain name to sell products bearing a logo incorporating the Complainant’s PALADIN trademark can obviously not amount to a bona fide use of goods or services.

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Finally, the Complainant is of the view that the disputed domain name was registered and is being used in bad faith. Taking into account the dispute already encountered between the Parties, the Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name. Such

registration was crafted for the purpose of drawing the Complainant’s customers to the Respondent’s

website and related products, which amounts to a use in bad faith.

B. Respondent

The Respondent did not submit a formal response. The Panel has considered the email communication from the Respondent, dated March 7, 2024, and notes that considering the overall circumstances of this case, it contains no submissions or evidence that would alter the outcome of this decision.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i)        the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(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.

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 PALADIN mark is recognizable within the disputed domain name, which leads to a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Furthermore, panels have further priorly agreed that the addition of a geographical term such as “usa”, which will be understood as referring to the United States of America, or a descriptive term such as “industrial”, do not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.

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

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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 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 registered a domain name which entirely reproduces the Complainant’s trademark. The disputed domain name redirects users to a website which sells competing products bearing a logo which incorporates the Complainant’s PALADIN trademark, and that refers to a company “Paladin Industrial Corporation Limited” that will lead users to believe that the disputed domain name and related website is held by the Complainant or an affiliated company. As a result, there is no doubt that the Respondent was well aware of the Complainant’s trademark when he registered the disputed domain name.

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.

Panels have held that the use of a domain name for illegal activities here, arguably the sale of goods infringing upon the Complainant’s trademark rights or, at a minimum, the impersonation of the Complainant, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that 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 <usapaladinindustrial.com> be transferred to the Complainant.

/Philippe Gilliéron/
Philippe Gilliéron
Sole Panelist
Date: December 2, 2024