ShareASale.com, Inc. v Copper Chen (铜 陈)

WIPO Case No. D2023-0818

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ShareASale.com, Inc. v. Copper Chen (铜 陈)

Case No. D2023-0818

1. The Parties

The Complainant is ShareASale.com, Inc., United States of America (“United States”), represented by Awin

AG, Germany.

The Respondent is Copper Chen (铜 陈), China.

2. The Domain Names and Registrar

The disputed domain names <uk-shareasale.com> and <uk-shareasale.net> 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 February 23,

2023. On February 23, 2023, the Center transmitted by email to the Registrar a request for registrar the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2023.

verification in connection with the disputed domain names. On February 23, 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 (DOMAIN PROTECTION SERVICES, INC.) and
contact information in the Complaint. The Center sent an email communication to the Complainant on

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 March 7, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2023. The Center on received an informal email communication from the Respondent on March 1, 2023.

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The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 4, 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

The Complainant is a company located in Chicago, United States, that offers an affiliate marketing platform in the United States.

According to the Complaint, the Complainant has used and has been associated with the ShareASale name
since 2000. On January 25, 2000, the Complainant registered and started to use the domain name
<shareasale.com>. On September 18, 2001, the Complainant incorporated the company ShareASale.com
Inc., the name under which it has consistently operated to date. The Complainant is the owner of the

SHAREASALE trademark registered with the United States on August 13, 2012, (Reg. No. 5,836,229).

Both disputed domain names were registered on January 13, 2023. They are currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to the
SHAREASALE trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not answer the Complaint, however, it provided an email with a brief comment in

Chinese language not related to the formalities of the proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The
Complainant must satisfy that:

(i)        the 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 such domain name; and

(iii)      the 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

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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 recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of a geographic terms like “UK” or the sign “-” before the trademark 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 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 made
demonstrable preparations to use, the disputed domain names or a name corresponding to the
disputed 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.

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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 Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of

confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the

Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

Both disputed domain names are not in use. Panels have found that the non-use of a domain name

(including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of

passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names

does not prevent a finding of bad faith in the circumstances of this proceeding.

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

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, <uk-shareasale.com> and <uk-shareasale.net> be transferred to the

Complainant.

/Pablo A. Palazzi/

Pablo A. Palazzi

Sole Panelist
Date: April 18, 2023