(UK) Limited, and Original Beauty Technology Company Limited v christina
WIPO Case No. D2023-0633
•03-04-2023
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Linhope International Limited, Sirens Design Limited, Linhope Intermational
(UK) Limited, and Original Beauty Technology Company Limited v. christina
fang, Xiamen ruanfang network technology co. LTD, and 薛荧坤 (xueyingkun)
Case No. D2023-0633
1. The Parties
The Complainants are Linhope International Limited, Hong Kong, China (“First Complainant”); Sirens Design Limited, United Kingdom (“Second Complainant”); Linhope Intermational (UK) Limited, United Kingdom (“Third Complainant”); and Original Beauty Technology Company Limited, Hong Kong, China
(“Fourth Complainant”), all represented by GSC Solicitors LLP, United Kingdom.
The Respondents are christina fang, Xiamen ruanfang network technology co. LTD, China (“First
Respondent”) and 薛荧坤 (xueyingkun) (“Second Respondent”), China.
2. The Domain Names and Registrars
The disputed domain name <houseofcbdress.shop> is registered with NameCheap, Inc. The disputed
domain names <houseofcbstores.com> and <thehouseofcbstores.com> are registered with DNSPod, Inc.
NameCheap, Inc. and DNSPod, Inc are referred to below separately and jointly as the “Registrar”.
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 10 and February 13, 2023, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names that differed from the named Respondents (“Persons Unknown”, Chen Jianqing, and Jianqing Limited) and contact information in the Complaint. The Center sent an email communication to the Complainants on February 13, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 15, 2023, the Complainants filed an amended Complaint in English and submitted a request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.
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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 February 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2023. A supplemental filing was received from the Complainant on February 21, 2023 regarding the language of any eventual Response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2023.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 21, 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
inter alia as HOUSE OF CB under licence from the First and Third Complainants. The Second Complainant operates a website associated with the domain name <houseofcb.com> that prominently displays the HOUSE OF CB mark and offers for sale HOUSE OF CB brand women’s clothing.
The First Complainant is a leading retailer of women’s fashion garments and accessories that specializes in HOUSE OF CB, registered on August 25, 2020, specifying goods in classes 3, 9, 14, 18, and 25. The above trademark registrations remain current. The Second Complainant trades
bodycon dresses. It is the proprietor of multiple trademark registrations in multiple jurisdictions, including
United Kingdom trademark registration number UK00003068906 for the series HOUSE OF CB; houseofcb;
house of cb; entered on the register on January 2, 2015, and specifying goods in classes 3, 9, 14, 18, and
25. The Fourth Complainant is recorded in the United Kingdom trademark register as the exclusive licensee
of this trademark series. The First Complainant is also the proprietor of Chinese trademark registration
number 14802543 for HOUSE OF CB in a stylized script, registered on January 14, 2018, specifying goods
in class 18; and Chinese trademark registration number 35653958 for HOUSE OF CB, registered on August
21, 2019, specifying goods in class 25. The Third Complainant is a wholly-owned subsidiary of the First
The First Respondent is an individual and a company located in Xiamen, Fujian Province, China.
The First Respondent registered the disputed domain name <houseofcbdress.shop> on October 12, 2022. This disputed domain name formerly resolved to a site in English titled “Party Dress” that displayed images of women’s clothing from the Second Complainant’s website and offered them for sale. The terms of service
identified the website operator as “Houseofcbdress”. The contact street address was in fact the Second
Complainant’s address.
The Second Respondent is an individual resident in Xiamen, Fujian Province, China. She registered the disputed domain names <houseofcbstores.com> and <thehouseofcbstores.com> on May 22, 2022. These disputed domain names formerly resolved to sites in English that prominently displayed the “House of CB” mark either as the title of the homepage or in the menu near the top of each page, as well as in the headers of the terms and conditions pages. The sites displayed images of women’s clothing from the Second Complainant’s website and offered them for sale. The terms and conditions on both these websites identified their operator as the “Housecbdresses.com team”. The shipping terms displayed an address that was the former registered office of Jianqing Limited.
At the time of this Decision, all the disputed domain names resolve to error messages.
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5. Parties’ Contentions
A. Complainants
The disputed domain names are confusingly similar to the First and Third Complainants’ HOUSE OF CB mark.
| websites associated with the disputed domain names are operating in breach of injunction orders made by | The Respondents have no rights or legitimate interests in respect of the disputed domain names. The counterfeit copies of the Second Complainant’s garments; or (ii) garments which are never delivered. |
| The disputed domain names were registered and are being used in bad faith. The disputed domain names were registered, and/or are being used in bad faith, namely for the purpose of a fraudulent scheme to deceive members of the public, divert sales from the Complainants, and/or take illegitimate advantage of the Complainants’ valuable goodwill and reputation. | |
| The Complainant requests that the disputed domain names be transferred to the Fourth Complainant. | |
| B. Respondents | |
| The Respondents did not reply to the Complainants’ contentions. | |
| 6. Discussion and Findings | |
| 6.1 Procedural Issues | |
| A. Consolidation: Multiple Complainants | |
| The Complaint was filed by four complainants. The First and Third Complainants both hold rights in HOUSE |
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OF CB marks. The Second Complainant is licensed to use those marks and the Fourth Complainant is also
registered as a licensee of the First Complainant’s marks. The Third Complainant is a wholly-owned
subsidiary of the First Complainant. The Complainants have appointed a single legal representative in this
proceeding. In view of these circumstances, the Panel finds that the Complainants have a common
grievance against the disputed domain name registrants and that it is efficient to permit the consolidation of
their complaints. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.1. Therefore, the Complainants are referred to below separately and
collectively as “the Complainant” except as otherwise indicated.
B. Consolidation: Multiple Domain Name Registrants
The amended Complaint initiates disputes in relation to two nominally different domain name registrants regarding three disputed domain names. The Complainant argues that the disputed domain names are all under the control of Chen Jianqing Chen.
The Complainant requests consolidation of the disputes against the 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. However, the Panel does not consider that paragraph 3(c) of the Rules was intended to enable a single person or entity to put a complainant to the unnecessary time, expense, and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. 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 Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2.
As regards common control, it is sufficient for the Panel to consider whether the disputed domain name held by the First Respondent is under common control with the other two disputed domain names held by the Second Respondent. It is unnecessary for the purposes of this consolidation request to determine whether any of the disputed domain names is under common control with domain names at issue in previous UDRP proceedings or court proceedings brought by the Complainant.
In the present dispute, all three disputed domain names include the element “houseofcb” and all three resolve to websites that reproduce multiple images of women’s clothing from the Second Complainant’s website and display them in a similar format. Further, according to the evidence presented by the Complainant, the lengthy terms and conditions on the websites are identical, except that those on the First Respondent’s site omit “of” and “es.com team” in the operator’s name and those on the Second Respondent’s sites leave blank space where the other displays the final clauses. The Panel takes note that the Respondents’ contact addresses are different, although both are located in Xiamen city, that the Registrars are different, and that the First Respondent registered its disputed domain name five months after the Second Respondent did. Taking into account all these circumstances, the Panel considers it more likely than not that the three disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes regarding the domain names would be unfair or inequitable to any Party.
Accordingly, the Panel will decide the Complaint regarding all three disputed domain names registered in the names of “christina fang, Xiamen ruanfang network technology co. LTD” or “薛荧坤 (xueyingkun)”, who are referred to below separately and collectively as the “Respondent” except as otherwise indicated.
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C. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name <houseofcbdress.shop> is in English while the Registration Agreements for the disputed domain names <houseofcbstores.com> and <thehouseofcbstores.com> are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names are in English, the disputed domain names resolve to websites in English, the persons named as respondents in the original Complaint responded to complaints filed in English in two previous UDRP proceedings, and one of them was a company incorporated in England and Wales, whereas the Complainants do not understand Chinese and it would be extremely costly to translate the Complaint and its annexes into Chinese and cause significant delay.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint and amended Complaint in this proceeding were filed in English.
The language of the Registration Agreement for one disputed domain name is English and the websites to
which all three disputed domain names formerly resolved were in English, from which it is reasonable to infer
that the Respondent understand that language. Moreover, despite the Center having sent an email
regarding the language of the proceeding, and the notification of the Complaint, in both Chinese and English,
the Respondent did not comment on the language of the proceeding or express any interest in otherwise
participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate
the Complaint into Chinese would create an undue burden and delay whereas accepting the Complaint in
English does not cause prejudice to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
D. Court Proceedings
The Complainant provides evidence of a series of injunctions issued by the High Court of Justice, Business use of the disputed domain names infringes these court orders. The Complainant also provides evidence of a default judgement granted in part by the United States District Court for the District of Connecticut on September 30, 2022 at the request of the Complainant and another against Jiangqing Chen and Jianqing
and Property Courts of England and Wales on December 16, 2019, January 14, 2020 and August 4, 2020
(Claim No. IL-2019-000141) against Chen Jianqing Chen and another regarding infringement of the HOUSE
Limited (Case number 3:21−cv−00871−JAM).
Paragraph 4(k) of the Policy provides that the requirements set forth in paragraph 4 of the Policy shall not prevent a respondent or a complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before this proceeding is commenced, or after such proceeding is concluded.
The Panel observes that the specific dispute in the present case was not submitted to a court either before
or after this proceeding was commenced. The Respondent in this administrative proceeding was not a
defendant in either of the court proceedings, even though it may be under the control of Mr. Chen. The
disputed domain names were not raised in either court proceedings; they were not yet registered at the time
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when the High Court of Justice court orders were made or, in one case, when the United States District Court granted default judgement. If the subsequent registration and use of the disputed domain names breach the terms of the High Court of Justice’s orders, as the Complainant alleges, the Panel does not consider that a reason to deny ex ante alternative relief under the UDRP. Therefore, the Panel will proceed
to evaluate the Complaint on the merits.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:
(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
Based on the evidence presented, the Panel finds that the Complainant has rights in the HOUSE OF CB mark.
All three disputed domain names wholly incorporate the HOUSE OF CB mark, in two cases as their
respective initial elements. They each add the word “dress” or “stores” and, in one case, the definite article
“the”. However, the addition of these words does not avoid a finding of confusing similarity because the
HOUSE OF CB mark remains clearly recognizable within all the disputed domain names. See WIPO
Overview 3.0, section 1.8.
The only additional element in each disputed domain name is a generic Top-Level Domain (“gTLD”) extension, either “.shop” or “.com”. As a standard requirement of domain name registration, this element may be disregarded in the comparison between a domain name and a trademark unless it has some impact beyond its technical function, which is not the case here. See WIPO Overview 3.0, section 1.11.
For the above reasons, the Panel finds that the disputed domain names are all confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first condition in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
| (ii) |
[the respondent] (as an individual, business, or other organization) [has] been commonly known by the or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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bona fide offering of goods and services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and WIPO Overview 3.0, section 2.8.1. At the present time, the disputed domain names no longer resolve to any active website, which creates no rights or legitimate interests for the purposes of the Policy.
As regards the first circumstance set out above, the disputed domain names wholly incorporate the HOUSE with names that began with the houseofcb mark, implying such an association. This does not constitute a use of the disputed domain names in connection with a
OF CB mark combined with the word “stores” or “dress” (which describes the Complainant’s products),
implying an association with the Complainant. All the disputed domain names formerly resolved to websites
that reproduced images of the Complainant’s products from the Complainant’s official website, displayed
them in a format similar to that of the Complainant’s official website, and offered the products for sale. The
Complainant submits that the Respondent is not associated with it but is rather infringing its HOUSE OF CB
mark. Moreover, the websites associated with <houseofcbstores.com> and <thehouseofcbstores.com>
each prominently displayed the HOUSE OF CB mark, giving the overall impression that they were operated
or endorsed by, or affiliated with, the Complainant. The website associated with the disputed domain name
<houseofcbdress.shop> displayed a different title that did not include the mark but, regardless of whether the
products that it offered for sale were genuine or counterfeit, nothing on it disclaimed any association with the
As regards the second circumstance set out above, the Respondent’s names are listed in the Registrar’s
WhoIs database as “christina fang, Xiamen ruanfang network technology co. LTD” and “薛荧坤
(xueyingkun)”, not the disputed domain names. There is no evidence indicating that the Respondent has
been commonly known by the disputed domain names.
As regards the third circumstance set out above, the disputed domain names resolve to websites that offer products for sale. That is not a legitimate noncommercial or fair use of the disputed domain names.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Nothing in the evidence indicates that the Respondent has any rights or legitimate interests, whether arising from trademark registrations or otherwise.
Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location or of a product or service on [the respondent’s] website or location.
With respect to registration, the disputed domain names were registered in 2022, years after the registration of the Complainant’s HOUSE OF CB trademark, including in China where the Respondent is based. The disputed domain names wholly incorporate that trademark, combined with merely descriptive words and gTLD extensions. The disputed domain names formerly resolved to websites that reproduced images of the Complainant’s products from the Complainant’s official website, displayed in a format similar to that of the Complainant’s official website. Moreover, the website associated with the disputed domain name <houseofcbdress.shop> listed the Complainant’s former registered office as its contact street address. In view of these circumstances, the Respondent finds that the Respondent was aware of the Complainant and targeted its HOUSE OF CB trademark at the times when it registered the disputed domain names.
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With respect to use, the disputed domain names, which wholly incorporate the HOUSE OF CB mark, formerly resolved to websites that reproduced images of the Complainant’s products from the Complainant’s official website, displayed them in a format similar to that of the Complainant’s official website, and offered the products for sale. Two of the websites also prominently displayed the HOUSE OF CB trademark. Given these circumstances and the findings in Section 6.2B above, the Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of the products on the Respondent’s websites, within the terms of paragraph 4(b)(iv) of the Policy.
The Panel takes note that the use of the disputed domain names has recently changed and that they no longer resolve to active websites. This change in use does not alter the Panel’s conclusion; if anything, it may be a further indication of bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <houseofcbdress.shop>, <houseofcbstores.com>, and
<thehouseofcbstores.com>, be transferred to the Fourth Complainant, Original Beauty Technology Company
Limited.
/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: April 3, 2023
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