The White Company (U.K.) Limited v 杨智超 (yang zhi chao)

WIPO Case No. D2023-3118

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The White Company (U.K.) Limited v. 杨智超 (yang zhi chao)

Case No. D2023-3118

1. The Parties

The Complainant is The White Company (U.K.) Limited, United Kingdom, represented by Dechert LLP,

United Kingdom.

The Respondent is 杨智超 (yang zhi chao), China.

2. The Domain Names and Registrar

The disputed domain names <thewhitecompang.com> and <thewhitecompant.com> are registered with

Xin Net Technology Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2023. On July 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 24, 2023, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on July 26, 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 in English on July 31, 2023.

On July 26, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 28, 2023, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the

proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on August 4, 2023. In accordance with the

page 2

Rules, paragraph 5, the due date for Response was August 24, 2023. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on August 25, 2023.

The Center appointed Joseph Simone as the sole panelist in this matter on September 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.

4. Factual Background

The Complainant, The White Company (U.K.) Limited, has specialized in luxury clothing, footwear and homeware since its founding in 1994.

The Complainant has an extensive global portfolio of trademarks, including the following:

- International Trade Mark Registration No. 933951 for THE WHITE COMPANY in Classes 3, 4, 5, 14,
16, 20, 24, 25, 27 and 35 registered on June 6, 2007 designating China;

- European Union Trade Mark Registration No. 2788578 for THE WHITE COMPANY in Classes 3, 4, 8,
14, 16, 18, 20, 21, 24, 25, 27, 28, 35, 39, 45 registered on July 30, 2004;

- United States of America Trade Mark Registration No. 3029459 for THE WHITE COMPANY in
Classes 3, 4, 16, 18, 21, 24, 25, 27, 28, 35 registered on December 13, 2005; and

- United Kingdom Trade Mark Registration No. UK00002349982 for THE WHITE COMPANY in Classes
3, 4, 8, 14, 16, 18, 20, 21, 24, 25, 27, 28, 35, 39, 45 registered on January 21, 2005.

The disputed domain names <thewhitecompang.com> and <thewhitecompant.com> were registered on
March 29, 2023.

The Complainant’s evidence indicates that at the time of filing of the Complaint, the disputed domain names resolved to pay-per-click sites. At the time of this decision, the disputed domain names continue to resolve to pay-per-click sites.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has prior rights in the THE WHITE COMPANY trade mark and that it has acquired a strong reputation in its field of business.

The Complainant further notes that the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s THE WHITE COMPANY trade mark.

The Complainant asserts that it has not authorized the Respondent to use its THE WHITE COMPANY trade mark, and there is no evidence to suggest that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

The Complainant further asserts that, considering the evidence, it is implausible that the Respondent registered the disputed domain names in good faith, and that any use of the disputed domain names must be in bad faith.

page 3

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

In accordance with paragraph 11(a) of the Rules:

“[…] the language of the administrative proceeding shall be the language of the Registration Agreement,
subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the
administrative proceeding.”

In this case, the language of the Registration Agreement for the disputed domain names is Chinese. Hence, the default language of the proceeding should be Chinese.

However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding for the following main reasons:

- The disputed domain names are made up of Latin characters;

- The language of the contents on the pay-per-click webpages under the disputed domain names is
completely in English;

- The Complainant is not in a position to conduct these proceedings in Chinese without significant
additional expense and delay due to the need to arrange for the translation of the Complaint and the
supporting Annexes.

The Respondent was notified in both Chinese and English of the language of the proceeding and the commencement of the proceeding and did not comment on the language of the proceeding or submit any response in either Chinese or English.

Considering the circumstances of this case, the Panel determines that the language of the proceeding shall be English, and as such, the Panel has issued this decision in English. The Panel further finds that such determination should not create any prejudice to either Party and should ensure that the proceeding takes place with due expedition.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the THE WHITE COMPANY trade marks.

The disputed domain names incorporate the Complainant’s trade marks THE WHITE COMPANY in its entirety but replacing the “y” with a “g” or “t”.

Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) makes clear that a domain name which consists of a common, obvious, or intentional
misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for
purposes of the first element. The Panel considers that the disputed domain names are an obvious
misspelling of the Complainant’s trade marks as it only swaps the “y” with a “g” or “t” but are otherwise
confusingly similar to the Complainant’s trade marks.

page 4

The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the THE WHITE COMPANY trade marks and in demonstrating that the disputed domain names are confusingly similar to its marks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the complainant is required to make a prima facie case that the
respondent lacks rights or legitimate interests in a domain name. Once a prima facie case is made out, the
respondent carries the burden of producing evidence in support of its rights or legitimate interests in the
domain name. If the respondent fails to do so, the complainant can be deemed to have satisfied
paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trade marks and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Thus, the Complainant has satisfactorily established a prima facie case.

At the time of filing of the Complaint, the disputed domain names resolved to pay-per-click sites.

The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that he enjoys rights or legitimate interests in the disputed domain names. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the

Respondent’s lack of rights or legitimate interests in the disputed domain names, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

Accordingly, and based on the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i)        circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark 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

(ii)       circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)      circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      circumstances indicating that the respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be
exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive

page 5

registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade
mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names.

When the Respondent registered the disputed domain names, the THE WHITE COMPANY trade marks were already widely known and directly associated with the Complainant’s activities. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain

names comprising typos) to a famous or widely known trade mark by an unaffiliated entity can by itself create
a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Given the extensive prior use and fame of the Complainant’s marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain names.

In addition, the disputed domain names consist of an obvious typosquatting variation of the Complainant’s official website at the domain name <thewhitecompany.com>. The Respondent has also provided no evidence to justify his choice of the terms “thewhitecompang” and “thewhitecompant” in the disputed domain names. In light of the foregoing, it would be unreasonable to conclude that the Respondent - at the time of the registration of the disputed domain names – was unaware of the Complainant’s trade marks.

The Panel is therefore of the view that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trade mark rights, and is using the disputed domain names to intentionally attract, for commercial gain, Internet users to his website or other online locations, by creating a likelihood of confusion with the Complainant’s trade marks.

The Panel further asserts that the Respondent has been the subject of many UDRP proceedings, for example, Utilities Employees Credit Union v. 杨智超 (Yang Zhi Chao), WIPO Case No. D2021-3096 and W.W. Grainger, Inc. v. 杨智超 (Yang Zhi Chao), WIPO Case No. D2021-2198. This clearly demonstrates a systematic behavior of registering reputable trade marks in domain names by the Respondent, which is further evidence of bad faith.

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.

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, <thewhitecompang.com> and <thewhitecompant.com>, be transferred to the Complainant.

/Joseph Simone/
Joseph Simone
Sole Panelist
Date: September 20, 2023