WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adam Smith v. 朱亚磊 (Ya Lei Zhu)

Case No. D2021-0894

1. The Parties

The Complainant is Adam Smith, United States of America (“United States”), represented by Ray Law Firm, United States.

The Respondent is 朱亚磊 (Ya Lei Zhu), China.

2. The Domain Names and Registrar

The disputed domain names <gearmoosenew.shop>, <gearmooseos.shop> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 26, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 2021 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 March 31, 2021.

On March 29, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 31, 2021. 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 of the Complaint in English and Chinese, and the proceedings commenced on April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on June 3, 2021. 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 is the owner of the trademark registration for the word mark GEARMOOSE (United States Registration No.: 5,235,890). The Mark is registered with regard to “providing online electronic publications, namely, electronic magazines and catalogs featuring consumer goods via an online computer network.” (Annex 9.) The Complainant maintains its website at “www.gearmoose.com”. The GEARMOOSE trademark was registered on July 4, 2017 under International Class 41. The Complainant has used the GEARMOOSE trademark since March 22, 2012.

The disputed domain names <gearmoosenew.shop> and <gearmooseos.shop> were registered on November 12, 2020 and December 3, 2020 respectively. At the date of the Complaint, the disputed domain name <gearmoosenew.shop> resolved to a website offering clothing products while the disputed domain name <gearmooseos.shop> resolved to a website offering cosmetic products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade mark. The addition of the terms “new”, “os” and “shop” in the disputed domain names do not eliminate the overall notion that the designations are connected to the trade mark and the likelihood of confusion that the disputed domain names and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain names and has used the GEARMOOSE trade mark to increase Internet user traffic on its website. The Respondent is using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, 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.

In this case, the language of the Registration Agreement for both the disputed domain names is Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

- the addresses provided on both websites of the disputed domain names are for locations in the United States, with United States country code phone numbers and area codes;

- products offered on the websites are listed in United States Dollars; and

- the Complainant is fluent only in English and would be prejudiced if it is required to translate the Complaint and supporting documents to Chinese;

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering those matters identified by the Complainant and the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese.

- the Respondent has not commented on the language of the proceeding.

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.

6.2 Multiple Domain Names

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. The Panel has the authority to consolidate multiple domains into one dispute provided that (i) the domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. (see section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”))

In this case, the following facts indicate that the disputed domain names are subject to common control:

- the Registrar for the disputed domain names are identical;

- both disputed domain names were registered by the same registrant; and

- the disputed domain names share a naming pattern, as both contain the generic Top-Level Domain (“gLTD”) “.shop” along with the Complainant’s GEARMOOSE trademark in full.

For the above reasons, the Panel accepts the consolidation of the disputed domain names in the Complaint.

6.3 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <gearmoosenew.shop> and <gearmooseos.shop> are confusingly similar to the Complainant’s trade mark. Both disputed domain names incorporate the Complainant’s GEARMOOSE trade mark in full. The disputed domain name <gearmoosenew.shop> is accompanied with the term “new” while the disputed domain name <gearmooseos.shop> is accompanied with the term “os”. Both disputed domain names are then accompanied with the generic Top-Level Domain (“gTLD”) “.shop”. The gTLD is generally disregarded when considering the first element. (see section 11.1 WIPO Overview 3.0)

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“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.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s GEARMOOSE trade mark or to apply for registration of the disputed domain name. Furthermore, the disputed domain names resolve to websites that offer for sale overlapping products and services from the Complainant’s website.

There is no evidence that the Respondent has used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain names.

In addition, the disputed domain names, which comprise of the Complainant’s trade mark in its entirety along with the gTLD “shop”, carry a risk of implied affiliation. (See section 2.5.1 of the WIPO Overview 3.0.)

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the GEARMOOSE trademark and the use of the Complainant’s GEARMOOSE trademark in both the disputed domain names cannot be a coincidence. The term “gearmoose” is an invented term and not common, generic nor descriptive. The Panel is satisfied that the Respondent was aware of the Complainant and its GEARMOOSE trade mark when he or she registered the disputed domain names.

The Respondent has registered the disputed domain names to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By prominently displaying and reproducing the Complainant’s GEARMOOSE trade mark in the disputed domain names, along with offering for sale overlapping products and services on its websites, the Respondent is clearly seeking to attract users for commercial gain.

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

The Complainant has therefore satisfied the third element under 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, <gearmoosenew.shop> and <gearmooseos.shop>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: June 16, 2021