Sister Golden, LLC v Lisa Sanchez, Megan King

WIPO Case No. D2025-0049

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sister Golden, LLC v. Lisa Sanchez, Megan King

Case No. D2025-0049

1. The Parties

The Complainant is Sister Golden, LLC, United States of America (“United States”), represented by Reinhart

Boerner Van Deuren s.c., United States.

The Respondents are Lisa Sanchez, United States and Megan King, United States.

2. The Domain Names and Registrars

The disputed domain name <sistergolden.shop> (the “First Disputed Domain Name”) is registered with

Sav.com, LLC (the “First Registrar”).

The disputed domain name <sistergoldeneur.shop> (the “Second Disputed Domain Name”) is registered with

Web Commerce Communications Limited dba WebNic.cc (the “Second Registrar”).

The disputed domain names are hereinaf ter collectively referred to as the “disputed domain names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2025. On January 8, 2025, the Center transmitted by email to the First Registrar a request for registrar verif ication in connection with the First Disputed Domain Name. On January 8, 2025, the First Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the First Disputed Domain Name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2025, providing the registrant and contact information disclosed by the First Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the First Amended Complaint on January 22, 2025.

The Center verif ied that the Complaint [together with the amendment to the Complaint/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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on January 29, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Parties of the Respondent’s default on February 20, 2025.

On February 14, 2025, the Complainant made a request that the Second Disputed Domain Name
<sistergoldeneur.shop> be added to this proceeding and filed a second amended Complaint accordingly.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 3, 2025. The Panel f inds 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.

On March 14, 2025, upon instruction from the Panel, the Center transmitted by email to the Second Registrar a request for registrar verification in connection with the Second Disputed Domain Name. On March 16, 2025, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Second Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center issued the Panel’s Administrative Panel Procedural Order No. 1 to the Parties on March 21, 2025, providing the registrant and contact information disclosed by the Second Registrar, inviting the Complainant to amend the Second Amended Complaint with the additional registrant contact information, and inviting the Respondent to submit a Response. The Complainant f iled a Third Amended Complaint on March 28, 2025. The Respondent did not provide any Response.

4. Factual Background

The Complainant is a creator of artwork, art prints, calendars, puzzles, and books featuring the Complainant’s artwork created by arranging flower petals and other natural elements. The Complainant sells the products through its retail store located in Wisconsin, United States, and online through its website located at the domain name <sistergolden.com>.

The Complainant is the proprietor of United States Trademark Registration No. 5059159 for SISTER
GOLDEN (word mark), registered on October 11, 2016 for services in class 35, claiming a date of first use in
May 2014.

The First Disputed Domain Name <sistergolden.shop> was registered on June 17, 2024. At the time of the Complaint, it resolved to an e-commerce site featuring yarn and various craf ts for sale. The evidence indicates that the First Disputed Domain Name <sistergolden.shop> was locked by the Registrar on January 8, 2025, and the website at that domain name was disabled shortly thereaf ter.

The Second Disputed Domain Name <sistergoldeneur.shop> was registered on January 14, 2025. At the time of the Complaint, it redirected to an e-commerce website identical to that to which the First Disputed Domain Name <sistergolden.shop> had previously resolved. The First Disputed Domain Name

<sistergolden.shop> redirected Internet users to the website at the Second Disputed Domain Name
<sistergoldeneur.shop>. At the time of this Decision, neither disputed domain name resolved to an active
website.

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5. Parties’ Contentions
A. Complainant
1. Procedural Issue - Addition of Domain Names

The Complainant requests the addition of the Second Disputed Domain Name <sistergoldeneur.shop> to these proceedings for the following reasons. The Second Disputed Domain Name was registered subsequent to the filing of the Complainant’s Complaint in an attempt to undermine these proceedings. The Second Disputed Domain Name is confusingly similar to the SISTER GOLDEN mark in which the Complainant has established rights. The Second Disputed Domain Name was registered subsequent to the First Registrar’s locking of the First Disputed Domain Name in connection with these Proceedings. The website established at the Second Disputed Domain Name incorporates the Complainant’s trademarks and sells identical copies of the Complainant’s copyrighted artwork, puzzles, calendars and books. Following the registration of the Second Disputed Domain Name, the First Disputed Domain Name redirected users to this website.

2. Procedural Issue - Consolidation of the Respondents

The Complainant requests consolidation of multiple Respondents for the following reasons: the disputed domain names both incorporate the entirety of the Complainant’s SISTER GOLDEN trademark. They were registered sequentially, with the Second Disputed Domain Name registered only af ter the f iling of the Complaint and lock placed on the First Disputed Domain Name. The content of both websites is

substantially identical.

The Complainant was unable to verify the connection of either named registrant to the disputed domain names and believes that the contact information provided was falsified. The telephone numbers provided did not correspond to valid telephone numbers in the United States. A reverse search of the email addresses of the Respondents could not link these email addresses to any persons. The IP addresses associated with these email addresses yielded results outside the United States. The Complainant reached one of the named Respondents by telephone and this person stated that she had not registered the disputed domain name and believed that her identity had been f raudulently used.

The fact that the content from the website at the First Disputed Domain Name was copied to the website of the Second Disputed Domain Name indicates common control, as does the fact that the First Disputed Domain Name redirected Internet users to the Second Disputed Domain Name. The Complainant was the target of common conduct by the Respondents (collectively the “Respondent”).

3.Substantive Contentions

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names incorporate the Complainant’s SISTER GOLDEN mark in its entirety. The addition of the geographically descriptive term “eur,” which is an abbreviation for Europe, does nothing to distinguish the Second Disputed Domain Name or prevent confusion with the Complainant’s SISTER GOLDEN trademark. The Complainant has not authorized the Respondent’s use of the Complainant’s SISTER GOLDEN trademark, the Respondent is not known by the name SISTER GOLDEN, and the Respondent’s use is not a legitimate noncommercial or fair use of the disputed domain names. The Respondent’s use of the website associated with the disputed domain names is intentionally designed to deceive consumers looking for the Complainant’s legitimate website. The First Disputed Domain Nam was registered more than 10 years after the Complainant began using the SISTER GOLDEN trademark. The website to which it redirected incorporated the Complainant’s trademarks and also of fer to sell identical copies of the Complainant’s artwork, puzzles, calendars, and books containing the Complainant’s artwork that was copied directly f rom the Complainant’s website. The Second Disputed

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Domain Name was registered af ter the Complaint was f iled and, af ter the website at the First Disputed Domain Name was disabled, showed conten identical to the website at it. The Complainant contends the websites are part of a scheme to phish for customers’ personal information.

B. Respondent

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

6. Discussion and Findings
6.1 Procedural Issues
Addition of Domain Name

As noted above, the Complainant requested the addition of the Second Disputed Domain Name on February 14, 2025, subsequent to the notif ication of the Complaint, which took place on January 29, 2025. The Second Disputed Domain Name had been registered on January 14, 2025 and, according to the

Complainant, the content from the website related to the First Disputed Domain Name had been copied to it subsequent to the f iling of the Complaint.

According to UDRP practice, panels are generally reluctant to accept requests to add domain names af ter a complaint has been notified because the addition of further domain names would delay the proceedings. The exception would be where there is clear evidence of respondent gaming/attempts to f rustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notif ication). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,

(“WIPO Overview 3.0”), section 4.12.2.

In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notif ication of the proceeding (which may impact case timelines).

The disputed domain name registrants did not comment on the Complainant’s request to add the Second
Disputed Domain Name.

Having reviewed the record, the Panel f inds that the Complainant holds trademark rights in the SISTER GOLDEN trademark. The evidence indicates that both disputed domain names were prima facie registered by the same or a related Respondent.

The Panel notes the chronology of events, namely, that the Second Disputed Domain Name was registered following the filing of the initial Complaint but prior to the notification of these Proceedings. The Panel f inds that the registration of the Second Disputed Domain Name appears to be contemporaneous with the

Registrar lock placed on the First Disputed Domain Name, which would have provided the Respondent notice that a proceeding had been initiated. The Panel notes that the content of the website to which the Second Disputed Domain Name resolved is substantially identical to that to which the First Disputed Domain Name resolved.

The Panel notes that, pursuant to a Panel order, these Proceedings were re-notified to the Parties following the f iling of the Second Amended Complaint. The Respondent did not provide any Response.

Accordingly, the Panel decides to permit the addition of the Second Disputed Domain Name to these proceedings.

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Consolidation: Multiple Respondents

The Second Amended Complaint was filed in relation to nominally dif ferent domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel notes that the websites to which both disputed domain names resolved are substantially identical. Both feature the Complainant’s mark and images of its products. Moreover, the First Disputed Domain Name redirected users to the website located at the Second Dispute Domain Name. The Panel notes that the Complainant provides evidence that the names and contact

information for both named registrants are falsif ied.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2 Substantive Issues

Paragraph 4(a) of the UDRP requires the 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 the Complainant has rights; and

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

(iii)      The 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

It is well accepted that the f irst 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 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 entirety of the SISTER GOLDEN mark is reproduced 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.

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Although the addition of other terms (here, “eur”) may bear on assessment of the second and third elements, the Panel f inds the addition of such terms does not prevent a f inding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst 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 of “proving a negative”, requiring information that is of ten 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 satisf ied 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 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 such as those enumerated in the Policy or otherwise.

There is no evidence that the Respondent is commonly known by the disputed domain names, nor that there are any circumstances or activities that would establish the Respondent’s rights therein. The disputed domain names consist of the Complainant’s SISTER GOLDEN mark (and as such are similar to the

Complainant’s own domain name <sistergolden.com>), adding “eur” in the Second Disputed Domain Name, referring to a common abbreviation for Europe. The Panel f inds that such composition indicates targeting of the Complainant.

Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation/passing
of f , or other types of f raud) can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel f inds 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 intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Complainant’s rights in its SISTER GOLDEN mark predate by at least eight years the registration of the disputed domain names. The disputed domain names contain the Complainant’s SISTER GOLDEN trademark and, together with the use to which the disputed domain names have been put, clearly implies a link with the Complainant’s business.

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Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation/passing of f, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. The disputed domain names resolve to websites purporting to offer “Sister Golden” branded products for sale and featuring images copied from the Complainant’s website. In light of the f inding that the Respondent has no rights in the disputed domain names, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The fact that the website to which the First Disputed Domain Name resolved was disabled af ter the f iling of the initial Complaint, and the Second Disputed Domain Name registered shortly thereaf ter, resolving to a website substantially similar to the f irst, further supports a f inding of bad faith.

The Panel f inds 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 names <sistergoldeneur.shop> and <sistergolden.shop> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: April 14, 2025