Simpson Strong-Tie Company Inc. v Haitang Wang

WIPO Case No. D2023-0743

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Simpson Strong-Tie Company Inc. v. Haitang Wang

Case No. D2023-0743

1. The Parties

The Complainant is Simpson Strong-Tie Company Inc., United States of America (the “United States”), represented by Shartsis Friese LLP, United States.

The Respondent is Haitang Wang, China.

2. The Domain Name and Registrar

The disputed domain name <simpson-strong-tie.com> is 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 18, 2023. On February 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2023, 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 (Whois Agent, Domain Protection Services, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2023 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 March 6, 2023.

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 Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 28, 2023.

The Center appointed Knud Wallberg as the sole panelist in this matter on April 6, 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.

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4. Factual Background

The Complainant, the Simpson Strong-Tie Company, Inc., is one of the largest suppliers of structural building products in the world. Since the 1980s, the Complainant has used the trademark SIMPSON STRONG-TIE in connection with structural connectors, fasteners, power tools, epoxies, and related products

and services. The Complainant owns multiple trademark registrations for SIMPSON STRONG-TIE including

United States registration no. 1,833,650 registered on May 3, 1994, for goods in international class 6.

The disputed domain name was registered on October 7, 2022, and resolves to a website on which the

Complainant´s logo is shown and on which the Respondent purports to offer Simpson Strong-Tie products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s
SIMPSON STRONG-TIE mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has ever used the name Simpson Strong-Tie or has offered goods or services in connection with the disputed domain name. Similarly, there is no evidence

that the Respondent has ever been commonly known by the disputed domain name. The website that is authorized to advertise or sell the Complainant’s products.

hosted at the disputed domain name mimics the Complainant’s website and purports to offer the

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Respondent has thus registered a domain name that is confusingly similar to the Complainant’s well-established mark. The website hosted at the disputed domain name mimics the look and feel of the

Complainant’s website by using the Complainant’s registered trademarks and logos, just as the website appears to offer a full range of the Complainant’s products. However, the Respondent has no relationship with the Complainant and is not authorized to sell the Complainant’s products or to use any of the Complainant’s trademarks. The website appears to have been set up to improperly divert the Complainant’s customers to the Respondent and potentially extract payment information.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i)        that the disputed domain name registered by the respondent is identical or confusingly similar to a

trademark or service mark in which the complainant has rights; and

(ii)       that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

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Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark SIMPSON STRONG-TIE.

The disputed domain name thus comprises the Complainant’s SIMPSON STRONG-TIE trademark in its
entirety with the addition of a hyphen and the generic Top-Level Domain (“gTLD”) “.com”, which is a
standard registration requirement and as such they are generally disregarded under the first element
confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the all disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the the disputed domain name.
Respondent to use its trademark and given the circumstances of this case, the Panel finds that the

The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. The disputed domain name resolves to a website on which the Complainant’s logo is shown and on which the Respondent purports to offer Simpson Strong-Tie’ products. Not only is there a high risk of implied affiliation caused by the identical replication of the Complainant’s SIMPSON STRONG-TIE mark without modification in the construction of the disputed domain name, but this risk of association is reinforced by the use of the Complainant’s logo on the website.

The Panel recognizes that there may be some limited situations where the registration and use of domain names that specifically refer to and incorporate the trademark of another entity may serve legitimate purposes, cf. section 2.8.1 of the WIPO Overview 3.0, but the requirements of the so called “Oki Data test” are clearly not met in this case.

Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:

(i)        circumstances indicating that the respondent has registered or has 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 the respondent’s documented out-of-pocket costs directly related to the
domain name; or

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(ii)       the respondent has 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 the holder has
engaged in a pattern of such conduct; or

(iii)      the respondent has registered the domain name primarily for the purpose of disrupting the business of

a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Given the circumstances of the case, in particular the distinctiveness and well-established reputation of the Complainant’s trademark SIMPSON STRONG-TIE, and the content of the website to which the disputed domain name redirects, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users. Moreover, the mere registration of a domain name that is identical to a well-known trademark by an unaffiliated entity may by itself create presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The disputed domain name redirects to a website that purports to sell the Complainant’s products, and the website even contains a reproduction of the Complainant’s registered logo. Such use is clearly likely to disrupt the business of the Complainant and to create confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location”, and this use thus constitutes bad faith use under the Policy.

Noting that the disputed domain name incorporates a well-known trademark, that the Respondent has failed to participate in these proceedings, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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, <simpson-strong-tie.com> be transferred to the Complainant.

/Knud Wallberg/
Knud Wallberg
Sole Panelist
Date: April 21, 2023