SLT IP Holdings LP v pengyun pei

WIPO Case No. D2024-0883

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SLT IP Holdings LP v. pengyun pei

Case No. D2024-0883

1. The Parties

The Complainant is SLT IP Holdings LP, United States of America (“United States”), represented by ESCA

Legal, United States.

The Respondent is pengyun pei, China.

2. The Domain Name and Registrar

The disputed domain name <surlatablestore.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29,
2024. On February 29, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On March 1, 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 (Super Privacy Service LTD c/o Dynadot) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
March 1, 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 amendment to the

Complaint on March 1, 2024.

The Center verified that the Complaint together with the amendment to the 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 5, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 25, 2024. On March 18, 2024, the Complainant requested the
suspension of the proceedings. On March 19, 2024, the Center notified the Parties of the suspension of the
proceedings. On May 6, 2024, the Center notified the Parties of the reinstitution of the proceedings. The
due date for Response after the reinstitution was May 12, 2024. The Respondent did not submit any
response. Accordingly, the Center notified the Commencement of Panel Appointment Process on
May 16, 2024.

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The Center appointed Edoardo Fano as the sole panelist in this matter on May 23, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is SLT IP Holdings LP, a United States company operating in the field of kitchenware, cookware, food products and culinary services, and owning several trademark registrations for SUR LA TABLE, among which:

- United States Trademark Registration No. 2,848,066 for SUR LA TABLE, registered on June 1, 2004;

- United States Trademark Registration No. 2,036,386 for SUR LA TABLE, registered on February 11,
1997;

- International Trademark Registration No. 1656904 for SUR LA TABLE, registered on March 15, 2022.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on January 17, 2024. It resolves to a website in which the Complainant’s trademark is reproduced and counterfeit goods bearing the Complainant’s trademark are offered for sale via “Buy on Amazon” link that resolves to <amazon.com>, together with products of the Complainant’s competitors, such as Ivtivfu and Onlyfire.

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 states that the disputed domain name is confusingly similar to its trademark SUR
LA TABLE.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, is not commonly known by the disputed domain name, and is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website on which the Complainant’s trademark is reproduced, and counterfeit goods bearing the Complainant’s trademark are offered for sale via “Buy on Amazon” link that resolves to <amazon.com>, together with products of the Complainant’s competitors.

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The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since
the Complainant’s trademark SUR LA TABLE is distinctive and well-known in the field of kitchenware,
cookware, food products and culinary services. Therefore, the Respondent targeted the Complainant’s
trademark at the time of registration of the disputed domain name and the Complainant contends that the
use of the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website,
creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation,

or endorsement of the Respondent’s website, qualifies as bad faith registration and use.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

6. Discussion and Findings

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

(i)      the disputed 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 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 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 mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “store”, 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 name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well accepted that a generic Top-Level Domain, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

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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 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.

Should the Complainant’s products offered for sale on the website to which the disputed domain name is directing Internet users (via “Buy on Amazon” link that resolves to <amazon.com>) be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have any rights or legitimate interests in using the disputed domain name that is confusingly similar

to the Complainant’s trademark in circumstances that are likely to give rise to confusion.

According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the

WIPO Overview 3.0, section 2.8.1:

“[...] resellers, distributors, or service providers using a domain name containing the complainant’s trademark
to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide
offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki
Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i)      the respondent must actually be offering the goods or services at issue;

(ii)     the respondent must use the site to sell only the trademarked goods or services;

(iii)    the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv)    the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.

D2001-0903.

However, the website at the disputed domain name is not only mentioning the Complainant’s trademark on
every webpage and making no reference to the lack of relationship between the Respondent and the
Complainant, but it is also offering for sale products of the Complainant’s competitors. Thus, the Panel is of
the opinion that this is sufficient to support the allegation of lack of rights or legitimate interests of the
Respondent in relation to this disputed domain name.

Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

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Based on the available record, 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, regarding the registration in bad faith of the disputed domain name, the reputation of the services is clearly established, and the Panel finds that the Respondent must have known of the Complainant, and deliberately registered the disputed domain name in bad faith, especially because of the content of the Respondent’s website at the disputed domain name, on which the Complainant’s trademark is reproduced, and counterfeit goods bearing the Complainant’s trademark are offered for sale via “Buy on Amazon” link that resolves to <amazon.com>, together with products of the Complainant’s competitors.

The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant’s business, and to attract Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which includes the Complainant’s trademark in its entirety with the mere addition of the term “store”, further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1.

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 name <surlatablestore.com> be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: May 25, 2024