Tee of the Zhang FT Pty Limited as trustee for The Zhang Family Trust v; Weirong Wei

WIPO Case No. D2023-3194

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tee of the Zhang FT Pty Limited as trustee for The Zhang Family Trust v.
Weirong Wei

Case No. D2023-3194

1. The Parties

The Complainant is Tee of the Zhang FT Pty Limited as trustee for The Zhang Family Trust, Australia, represented by Addisons, Australia.

The Respondent is Weirong Wei, China.

2. The Domain Name and Registrar

The disputed domain name <aquablus.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 July 25, 2023. On connection with the disputed domain name. On July 27, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 August 2, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was August 22, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 23, 2023.

The Center appointed Edoardo Fano as the sole panelist in this matter on August 28, 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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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 Tee of the Zhang FT Pty Limited as trustee for The Zhang Family Trust, an Australian company operating in the fashion field, especially beachwear and swimwear, and the Complainant owns several trademark registrations worldwide consisting of or including AQUA BLU, among which:

- Australian Trademark Registration No. 883043 for AQUA BLU, registered on September 4, 2003;

- International Trademark Registration No. 1162734 for AQUA BLU AUSTRALIA, registered on May 2,
2013, also designating China, that is the Respondent’s country.

The Complainant also operates on the Internet, its website being “

The Complainant has provided evidence in support of the above.

According to the WhoIs record, the disputed domain name was registered on August 8, 2022, and it resolves to a website on which the Complainant’s trademark and logo, as well as products’ pictures taken from the Complainant’s official website, are reproduced, and the same fashion products as those of the Complainant are purportedly offered for sale at discounted prices.

On February 28, 2023, the Complainant’s lawyers sent a cease-and-desist letter to the Respondent, without receiving any reply.

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 contends that disputed domain name is confusingly similar to its trademark AQUA
BLU.

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, it is not commonly known by the disputed

domain name, and it 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 and logo, as well as products’ pictures taken from the Complainant’s
official website, are reproduced, and the same fashion products as those of the Complainant are purportedly
offered for sale at discounted prices.

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The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark AQUA BLU is well known in the fashion field, especially beachwear and swimwear. 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.

Based on the available record, the Panel finds 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 Panel finds 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.

While the addition of other terms, here the letter “s”, may bear on assessment of the second and third elements, the Panel finds the addition of such letter 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.

Based on the available record, 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.

prima facie 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.

Having reviewed the record, the Panel finds the Complainant has established a case that the rebutted the Complainant’s

Should the Complainant’s products sold on the website to which the disputed domain name is directing Internet users 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.

Even if the products sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s website, the Panel finds that the use of the Complainant’s trademark and logo on the homepage, the use of products advertising material taken from the Complainant’s official website, and the lack of any prominent and accurate disclaimer disclosing the lack of relationship with the Complainant would falsely suggest to Internet users, under the Oki Data principles (see above), that the website to which the disputed domain name resolves is owned by the Complainant or at least somehow affiliated to the Complainant.

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The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

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 Complainant’s trademark AQUA BLU in the fashion field, especially beachwear and swimwear, 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 and logo, as well as products advertising material from the Complainant’s official website, are reproduced, and the same fashion products as those of the Complainant are purportedly offered for sale at discounted prices.

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 source, sponsorship, affiliation or endorsement of its website.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. Such use of the disputed domain name also disrupts the Complainant’s business.

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 <aquablus.com> be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: September 3, 2023