Shenzhen Relx Technology Co., Ltd. v Anuwat Relax

WIPO Case No. D2022-4580

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shenzhen Relx Technology Co., Ltd. v. Anuwat Relax

Case No. D2022-4580

1. The Parties

Complainant is Shenzhen Relx Technology Co., Ltd., China, represented by Advance Law Firm, China.

Respondent is Anuwat Relax, Thailand.

2. The Domain Names and Registrar

The disputed domain names <justrelxthailand.com>, <relxclubthailand.com>, <relxnowofficial.com>, and

<relxthailand.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2022. On December 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 1, 2022, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on December 5, 2022 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 on December 7, 2022.

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 of the Complaint, they would like to explore settlement, Complainant should submit a request to suspend the proceeding. On January 17, 2023, Complainant indicated that they had tried to contact Respondent several times without success, therefore, they wanted to continue the proceeding. On January 23, 2023, the Center received another email from Respondent.

and the proceedings commenced on December 15, 2022. In accordance with the Rules, paragraph 5, the
due date for Response was January 4, 2023. Respondent did not submit a formal response. Accordingly,
the Center notified the Parties of Respondent’s default on January 5, 2023. On January 12, 2023, the

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 23, 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 manufactures and markets electronic cigarettes in China and internationally under the RELX trademark, for which it is the proprietor of several registrations, including the following:

- Chinese trademark No. 28527765 for RELX (device mark), registered on December 7, 2018 for goods
in class 34;

- Thai trademark No. 201124450 for RELX (device mark), registered on November 10, 2020 for goods
in class 34.

Complainant operates its business websites at the domain names <relxtech.com> and <relxnow.com>.

The disputed domain names were registered on the dates listed below. Each resolves to a slightly different webpage offering various “Relx” products for sale:

<relxthailand.com> on May 23, 2019;
<justrelxthailand.com> on August 13, 2019;
<relxclubthailand.com> on June 18, 2020;

<relxnowofficial.com> on August 5, 2020.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it was founded in China in 2018 and has grown into the world’s leading enterprise specializing in e-vapor products. Complainant is listed on the New York Stock Exchange, and distributes products to customers around the world. Its products have received numerous design awards and the brand enjoys a high reputation in China and globally. The disputed domain names all

contain Complainant’s RELX trademark together with non-distinctive elements.

Under the second element, Complainant states that Respondent has no trademark rights in respect of the disputed domain names. Respondent is not a licensee of Complainant and is not authorized to use the RELX trademark or to register it as a domain name. Respondent uses the disputed domain names to establish websites to promote e-vapor products bearing Complainant’s RELX trademark without the authorization of Complainant. The websites prominently display Complainant’s RELX trademark but do not reveal Respondent’s relationship to Complainant.

Under the third element, Complainant states that its RELX brand products enjoy a high reputation in China and globally and are well known to the relevant consumers. Based on this, and on the content of Respondent’s websites, it can be inferred Respondent knew about Complainant’s prior rights in the RELX trademark. Respondent is using the disputed domain names to deceive consumers by promote and sell e- vapor products bearing Complainant’s RELX trademark. The actions of Respondent have damaged the reputation of Complainant in Thailand.

Complainant requests transfer of the disputed domain names.

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B. Respondent

Respondent did not formally reply to Complainant’s contentions, save for an email received on January 12, 2023 stating “I don’t need those domains anymore. You can do whatever you like.” and another email received on January 23, 2023 stating “too long didn't read. you can do whateer [whatever] you want. I just don’t care anymore.”

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

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

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      Respondent has registered and is using the disputed domain names in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall 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”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the RELX trademark through registrations in China and Thailand. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to this trademark, as the RELX trademark is clearly recognizable within the disputed domain names. The disputed domain names additionally contain the dictionary words “just,” “club,” “now,” “official,” and “thailand,” that do not prevent a finding of confusing similarity. UDRP panels have consistently held that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.

It is the well-established view of UDRP panels that a generic Top-Level Domain such as “.com” is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i)           before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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(ii)          respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii)          respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names nor is using the RELX trademark with the permission of Complainant. The nature of the disputed domain names, each of which reflects Complainant’s trademark in its entirety together with the dictionary words “just,” “club,” “now,” “official,” and “thailand” cannot constitute fair use since such composition suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain names.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

Respondent has not provided evidence of rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain names, nor that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain names resolve to websites displaying Complainant’s RELX trademark and referencing products related to Complainant’s business. Respondent purports to offer “Relx” products for sale (it is not clear from the record whether or not those are genuine “Relx” products), but even if it was to be considered that Respondent was really offering Complainant’s products, the Panel notes that the composition of the disputed domain names carries a risk of an implied affiliation. Further, the websites connected with the disputed domain names do not accurately and prominently disclose the relationship (or lack thereof) between Respondent and Complainant. There is no evidence that the disputed domain names have been registered and are being used for legitimate noncommercial purposes. See WIPO Overview 3.0, sections 2.1, 2.5.1, and 2.8, and cases cited thereunder.

Respondent acknowledges that he or she no longer needs the disputed domain names. Therefore, it would appear that currently Respondent has no interest in the disputed domain names.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its RELX trademark predate the registration of the disputed domain names. The disputed domain names reflect Complainant’s trademark together with dictionary words that would indicate to the Internet user that the websites are operated by Complainant in Thailand (or are “official”). The disputed domain names are therefore confusingly similar to Complainant’s trademark and inherently misleading. The Panel finds that, by registering such disputed domain names, Respondent has attempted to create an association with Complainant’s trademark.

Turning to use of the disputed domain names, the Panel finds that Complainant has demonstrated Respondent’s bad faith in use of the disputed domain names. The websites demonstrate Respondent’s attempt to impersonate Complainant or create an association with Complainant for commercial gain. Such conduct clearly demonstrates Respondent’s bad faith. See WIPO Overview 3.0, section 3.1.4.

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Respondent has failed to provide any evidence of a connection to a legitimate business related to the RELX
trademark. The Panel finds that Respondent has registered four disputed domain names targeting
Complainant’s mark and has failed to provide any evidence of actual or contemplated good-faith use of any
of the disputed domain names. Under the circumstances, the Panel does not find any such use plausible.

Respondent’s conduct therefore constitutes bad faith.

The Panel therefore finds that Complainant has established the third element under 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 disputed domain names <justrelxthailand.com>, <relxclubthailand.com>,

<relxnowofficial.com>, and <relxthailand.com> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: February 6, 2023