Streamlight Inc. v Onjjk Pmiki, Shuang Zhu, Wnvjfk Ybnjw
WIPO Case No. D2023-0070
•22-02-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Streamlight Inc. v. Onjjk Pmiki, Shuang Zhu, Wnvjfk Ybnjw
Case No. D2023-0070
1. The Parties
Complainant is Streamlight Inc., United States of America, represented by John Berryhill, Ph.d., Esq., United
States of America.
Respondent is Onjjk Pmiki, Hong Kong, China, Shuang Zhu, China, and Wnvjfk Ybnjw, Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <newstreamlight.com>, <storestreamlight.com>, <streamlightsale.com>, and
<streamlightshop.com> (the “Domain Names”) 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 January 6, 2023. On January 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 9, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names 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 Complainant on January 10, 2023 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 January 10, 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 Respondent of the Complaint, and the proceedings commenced on January 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2023. Respondent did not submit any response. Accordingly, the
Center notified Respondent’s default on February 2, 2023.
The Center appointed Marina Perraki as the sole panelist in this matter on February 8, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
4. Procedural Issue: Consolidation of Respondents
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
Two of the Domain Names have the same named Respondent, namely <storestreamlight.com> and
<streamlightsale.com>.
The Panel notes the following features of these two Domain Names and the other two ones and arguments submitted by Complainant in favor of the consolidation:
| - | they all share the same pattern, namely Complainant’s brand STREAMLIGHT and a descriptive word; |
| - | they all lead to websites with identical website template; |
| - | they all have the same registrar and hosting; |
| - | the registrant of Domain Names <newstreamlight.com> and <streamlightshop.com> utilize two obviously fake names formed by keypresses on closely spaced keys, such as the sequences “Onjjk” and “Ybnjw”, with the same telephone number, email service and addresses in respective commercial shopping centers in Hong Kong, China; and |
| - | the Domain Names <newstreamlight.com> and <streamlightshop.com> were registered on the same day with only minutes difference and these two with only a couple of weeks difference from the Domain Names <storestreamlight.com> and <streamlightsale.com>. |
Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent, providing possibly fake ID details, or at least all Respondent are under the common control. Furthermore, named Respondents did not submit any arguments to rebut this inference.
The Panel finds that consolidation is fair to both Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there are more than one Respondent) but have chosen not to respond (see WIPO Overview 3.0, section 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the file, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity, and hence the Panel grants the consolidation (and will refer to these Respondents as “Respondent”).
5. Factual Background
Complainant is a company that designs, manufactures and markets high-performance lighting, weapon light/laser sighting devices, and scene lighting solutions for professional law enforcement, military, firefighting, industrial, automotive, and outdoor applications. Complainant operates its principal website at “ and has operated as “Streamlight Inc.” since 1974.
Complainant owns trademark registrations for STREAMLIGHT, including the United States of America trademark registrations numbers:
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| - | 1479512, STREAMLIGHT (word), filed on October 24, 1986 and registered on March 8, 1988 for goods in international class 11; |
| - | 3004837, STREAMLIGHT (word), filed on February 17, 2004 and registered on October 4, 2005 for goods in international class 11; and |
| - | 5586298, STREAMLIGHT (word), filed on April 24, 2018 and registered on October 16, 2018 for goods in international class 9. |
The Domain Names were registered as follows:
<newstreamlight.com> on September 22, 2022;
<streamlightshop.com> on September 22, 2022;
<storestreamlight.com> on October 7, 2022 ; and
<streamlightsale.com> on October 7, 2022.
All Domain Names lead to websites using a common template, displaying Complainant’s copyrighted marketing materials, product photographs and advertising copy, and falsely purporting to offer Complainant’s goods and those of other manufacturers for sale (the “Websites”). The Websites are offering Complainant’s products at prices which are, per Complainant, far below wholesale cost. They all share a common “About Us” page. Text in this section, such as “We recognize that our longevity as a growing business depends on the satisfaction of our loyal customers”, pulls up, per Complainant, over 1,600 e-commerce sites in Google search, all of which use the identical template and payment systems. Search results per Complainant point out that the phrase in question is used on scam sites. Per Complainant, Complainant has found that Respondent does not actually ship products ordered but the Websites merely collect payments from unsuspecting visitors. The four Domain Names per Complainant are part of a larger scheme which extends to a wide range of cybersquatted domain names using the identical template website.
6. Parties’ Contentions
A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
B. Respondent
Respondent did not reply to Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
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A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the STREAMLIGHT mark.
The Panel finds that the Domain Names are confusingly similar to the STREAMLIGHT trademark of
Complainant.
The Domain Names incorporate the said trademark of Complainant in its entirety. This is sufficient to
establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525).
The words “new”, “shop”, “store” and “sale” which are added in the Domain Names, do not avoid a finding of confusing similarity (WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of
the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements
SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J.
Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the STREAMLIGHT marks of
Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.
Furthermore, as Complainant demonstrated, the Domain Names resolved at the time of filing of the
Complaint to the Websites containing content that suggests falsely that the Websites are those of
Complainant or of an affiliated entity or of an authorized partner of Complainant.
Per Complainant, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant
and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the
Websites and the use of the Domain Names by Respondent.
A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggest that the Websites are official sites of Complainant or of an entity affiliated to or endorsed by Complainant. The Websites extensively reproduce, without authorization by Complainant, Complainant’s STREAMLIGHT
trademarks and marketing material as well as product photographs, without any disclaimer of association (or lack thereof) with Complainant. The “About Us” pages fail to identify the operator of the Websites and fail to
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indicate that the Websites are not authorized by Complainant, while they incorporate an identical text which
is, per Complainant, used on scam sites.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:
(i) that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the STREAMLIGHT mark had been used and registered at the time of the Domain Names registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when
registering the Domain Names.
Furthermore, the Domain Names incorporate in whole Complainant’s mark plus additional non-distinctive words, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names.
The Websites’ content, eminently displaying Complainant’s trademarks and copying Complainant’s marketing material, while offering for sale goods bearing Complainant’s trademarks, further supports knowledge of Complainant and its field of activity.
As Complainant demonstrated, the Websites’ content is targeting Complainant’s trademark, as they
prominently displayed Complainant’s STREAMLIGHT trademark and product photographs purportedly of
Complainant. This further supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4),
reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some
way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC /
Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard,
Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use of the Domain Names, Complainant has demonstrated that the Domain Names were used to resolve to Websites, which prominently displayed Complainant’s registered trademarks, logos, and product photographs, offering for sale goods purported to be of Complainant in abnormally low prices,
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thereby giving the false impression that they were operated by Complainant or a company affiliated to intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Websites they resolve to. This supports the finding of bad faith use (WIPO Overview 3.0, section 3.1.4).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the
Domain Names in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the Domain Names, <newstreamlight.com>, <storestreamlight.com>, <streamlightsale.com>, and
<streamlightshop.com>, be transferred to Complainant.
/Marina Perraki/
Marina Perraki
Sole Panelist
Date: February 22, 2023
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