WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Linhope International Limited and Original Beauty Technology Company Limited v. Jianqing Ltd. (Company No. 12282015)

Case No. DAU2021-0013

1. The Parties

The Complainants are Linhope International Limited and Original Beauty Technology Company Limited, Hong Kong, China represented by Corrs Chambers Westgarth, Australia.

The Respondent is Jianqing Ltd. (Company No. 12282015), United Kingdom.

2. The Domain Names and Registrars

The disputed domain names <cbdresses.com.au>, <cbstyles.com.au>, and <houseofcb.com.au> are registered with GoDaddy.com, LLC and the disputed domain name <houseofcbonline.com.au> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (collectively, the “Disputed Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 11, 2021, the Center transmitted by emails to GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Names. On March 12, 2021, GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center their verification responses 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2021. The Respondent did not submit any response however, the Center received an email from the Respondent on March 24 and 26, 2021. Accordingly, the Center notified the Parties of the Commencement of the Panel Appointment on April 7, 2021.

The Center appointed John Swinson as the sole panelist in this matter on April 9, 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 Complainants in these proceedings are Linhope International Limited (the “First Complainant”) and Original Beauty Technology Company Limited (the “Second Complainant”). Both companies are incorporated in China.

The First Complainant owns trade marks in various jurisdictions in connection with the House of CB brand, including United Kingdom registered trade mark number UK00003068906 for the series HOUSE OF CB, HOUSEOFCB, and HOUSE OF CB, registered on January 2, 2015 (the “House of CB Trade Mark”), the latter two being in under case letters. The First Complainant also owns various trade marks in the United Kingdom relating to the CB brand, including registered trade mark number UK00003068910 for the series CB BODY, CB BODY, and CBBODY, registered on November 21, 2014 (the “CB Trade Mark”), the second CB BODY being in under case letters. The Panel will refer to the House of CB Trade Mark and CB Mark collectively as the “Trade Marks”. According to the Complaint, the First Complainant has granted an exclusive license to the Second Complainant to use the Trade Marks.

According to the Complaint, the Second Complainant has traded under the House of CB brand since 2014 worldwide via its website at “www.houseofcb.com” as well as branded stores and concessions within stores in the United Kingdom, United States, and Australia. The Second Complainant sells a large range of clothing and accessories.

The Respondent in these proceedings is Jianqing Limited, a company incorporated in the United Kingdom.

The Respondent owns a number of trade marks for HOUSEOFCB, the earliest of which is Australian registered trade mark number 2055948, which was filed on December 6, 2019, and registered on July 14, 2020 (the “Respondent’s Trade Mark”). The First Complainant has applied to remove this mark from the Australian trade mark register, and the Respondent has opposed the non-use action. Those proceedings are ongoing. The entity representing the Respondent in those proceedings is named “douglass2010” which does not appear to be the name of a person, law firm or trade mark attorney firm. According to searches conducted by the Panel, “douglass2010” is the Australian address for service for over 7,000 Australian trade mark applications and registrations that mostly appear to be owned by individuals and businesses from China.

The date on which the Disputed Domain Names <cbdresses.com.au>, <cbstyles.com.au>, and <houseofcb.com.au> were first registered is not known to the Panelist. These Disputed Domain Names resolve to websites offering clothing and accessories for sale. The Disputed Domain Name <houseofcbonline.com.au> was registered on October 16, 2020. This Disputed Domain Name does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Names all contain either “houseofcb” or “cb” and are confusingly similar to the Trade Marks and the Complainants’ rights in the name “House of CB”.

The Disputed Domain Name <houseofcb.com.au> is identical to the HOUSE OF CB Trade Mark. The Disputed Domain Name <houseofcbonline.com.au> is confusingly similar to the HOUSE OF CB Trade Mark because it contains the HOUSE OF CB Trade Mark in its entirety. The additional word “online” in Disputed Domain Name <houseofcbonline.com.au> does not distinguish it from the HOUSE OF CB Trade Mark because the Second Complainant offers retail services online.

The Disputed Domain Names <cbdresses.com.au> and <cbstyles.com.au> are confusingly similar to the Trade Marks and the Complainants’ rights in the name “House of CB” because they incorporate the element “cb”. The fact that these Disputed Domain Names also incorporate either the word “dresses” or “styles” does not distinguish them from the Trade Marks or the name “House of CB” in which the Complainants have rights, because the Second Complainant’s business involves the sale of clothing.

Rights or Legitimate Interests

The Disputed Domain Names were registered years after the Second Complainant commenced trading under the Trade Marks and “House of CB” name.

The Complainants have no awareness of the Respondent being known (or commonly known) by the name “House of CB” or any other name incorporating the term “CB”.

The Complainant has not licensed or authorised the Respondent to register the Disputed Domain Names or use the Trade Marks for any purpose.

The Respondent has made elaborate efforts to hold itself out as a legitimate brand owner by replicating the Second Complainant’s business.

The websites to which the Disputed Domain Names resolve display images and content copied from the Second Complainant’s website and offer for sale copies of the Second Complainant’s products in a similar format to the Second Complainant’s website.

In addition, an individual contacted the Second Complainant in January 2021 after purchasing two products from the Disputed Domain Name <houseofcbonline.com.au>, believing them to be genuine products of the Second Complainant. A security tag attached to one of the products was almost identical to the security tags used by the Second Complainant on its products. These security tags were invented by a director of the Second Complainant and are marketed and sold by the Second Complainant to other retailers under the name “Protect-a-tag”.

The First Complainant has applied to remove the Respondent’s Trade Mark from the Australian trade mark register. The Complainants also intend to vigorously oppose a number of other Australian trade mark applications filed by the Respondent for HOUSE OF CB and HOUSEOFCB.

In November 2019, the Complainants became aware of various domain names featuring the HOUSE OF CB Trade Mark, including <houseofcblondon.com>, that the Respondent had registered and was using to display websites that featured images and other content copied from the Second Complainant’s website. The First Complainant instituted proceedings in the High Court of England, which resulted in an order prohibiting the Respondent from using the HOUSE OF CB Trade Mark or any similar sign and ordering the Respondent to transfer various domain names, including <houseofcblondon.com>, to the First Complainant. The Disputed Domain Names are in breach of those orders.

The Complainants brought a successful complaint against the Respondent in respect of various domain names, including <houseofcblondon.com>, in Linhope International Limited, Original Beauty Technology Company Limited v. Domains by Proxy, LLC, Blue Face, Chen jiangqing, chenjianqing chen and Lyonn Smith, WIPO Case No. D2020‑1775.

The conduct described above demonstrates that any offering of goods or services by the Respondent through the Disputed Domain Names is not bona fide. The use of the Disputed Domain Names by the Respondent does not amount to a legitimate noncommercial or fair use, without intent for commercial gain. Instead, the Respondent is likely using the terms “House of CB” and “CB” in the Disputed Domain Names (in conjunction with content on the websites at the Disputed Domain Names which has been copied from the Second Complainant’s website) as part of a fraudulent scheme to misleadingly divert customers from the Second Complainant’s website and/or induce customers to pay for either counterfeit copies of the Second Complainant’s products or products that are never delivered.

Registered or Used in Bad Faith

The Disputed Domain Names were registered and have been used for the purpose of a fraudulent scheme to deceive members of the public, divert sales from the Second Complainant, and take illegitimate advantage of the Complainants’ valuable goodwill and reputation.

By using the Disputed Domain Names, the Respondent is intentionally attempting to attract consumers or potential consumers to the websites at the Disputed Domain Names and create a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of those websites. This gives the misleading impression that the websites at the Disputed Domain Names are the official websites of, or affiliated with, the Second Complainant.

The registration of the Disputed Domain Names and use of content from the Second Complainant’s website on the websites at the Disputed Domain Names indicates that the Respondent was fully aware of the Second Complainant’s business and had the Trade Marks and/or the Complainants’ rights in the name “House of CB” in mind at the time of registering the Disputed Domain Names and setting up the corresponding websites.

Consideration should also be given to the Respondent’s anticipated failure to provide evidence of any actual or contemplated good faith use.

B. Respondent

The Respondent did not file a formal response. An unnamed person sent two unsigned email communications from the email addresses “[…]@qq.com” and “[…]@houseofcb.com.au”. Both email communications included the same annexes and made the following statements.

The Respondent owns trade mark registrations for HOUSEOFCB in various countries. The Respondent and the Disputed Domain Names are legally registered. Trade mark registration details or certificates and company incorporation details were provided.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights; and

(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 or has subsequently been used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights.

Generally, the test for identity or confusing similarity involves a comparison of the domain name and the trade mark to assess whether the trade mark is recognisable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)).

The Disputed Domain Name <houseofcb.com.au> is identical to the HOUSE OF CB Trade Mark.

The Disputed Domain Name <houseofcbonline.com.au> contains the HOUSE OF CB Trade Mark in its entirety plus the word “online”. This additional dictionary term, which is related to the Second Complainant’s business as a fashion retailer with an online presence, does not prevent a finding of confusing similarity. The HOUSE OF CB Trade Mark is recognisable in the Disputed Domain Name <houseofcbonline.com.au>. The Disputed Domain Name <houseofcbonline.com.au> is confusingly similar to the HOUSE OF CB Trade Mark.

The Disputed Domain Names <cbdresses.com.au> and <cbstyles.com.au> both contain the term “cb”, plus the words “dresses” and “styles” respectively.

In two previous disputes involving the same Complainants and Respondent, the panels concluded that the domain names <cbsexydresses.com>, <cbdresslondon.com>, <cbdresses.com>, and <cbdressescanada.com> were confusingly similar to the Complainants’ trade marks featuring the words “House of CB” (see Linhope International Limited, Original Beauty Technology Company Limited v. Domains by Proxy, LLC, Blue Face, Chen jiangqing, chenjianqing chen and Lyonn Smith, WIPO Case No. D2020‑1775 (the “First Linhope Case”), and Linhope International Limited, Original Beauty Technology Company Limited v. Privacy Protect LLC / heba, Xiamen Heba Brand Management Co., Ltd.; Whoistrustee.com Limited / Blue Face; Domains By Proxy LLC / Chen Jiangqing, JIANQING LTD. / Mr. Chen, WIPO Case No. D2020-3481 (the “Second Linhope Case”)). This conclusion was based on the fact that the domain names all incorporated the “cb” element of the Complainant’s Trade Marks, which the prior panels considered to be the dominant or distinctive element of those Trade Marks. The Panel agrees with this reasoning, which applies equally to the current case.

The panels in the First Linhope Case and Second Linhope Case also found that the confusing similarity was affirmed by the content on the websites to which the domain names is those cases resolved. That content was very similar to the content on the websites to which the Disputed Domain Names <cbdresses.com.au> and <cbstyles.com.au> in the present case resolve, in that they all featured images and content copied from the Second Complainant’s website. The Panel agrees with the conclusions of the prior panels in this regard.

In light of the above, the Panel considers the Disputed Domain Names <cbdresses.com.au> and <cbstyles.com.au> to be confusingly similar to the Trade Marks.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants are required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.

The Complainants contend that they have not authorised the Respondent to use the Trade Marks, including in the Disputed Domain Names. This is not disputed by the Respondent. The Disputed Domain Names are not derived from the Respondent’s name. The Complainants’ rights in the Trade Marks predate the registration of the Disputed Domain Name <houseofcbonline.com.au>. The registration dates of the three other Disputed Domain Names are unclear. In the previous disputes involving the Complainants and Respondent, the earliest registration of a domain name by the Respondent was November 4, 2019 (see the First Linhope Case, the Second Linhope case and Linhope International Limited, Original Beauty Technology Company Limited v. c/o WHOIStrustee.com Limited / Mark Lewis; Blue Face; Mr Chen / Chen Jianqing aka Jianqing Chen, Chen Jianqing Chen, Chenjianqing Chen and Chen Jiangqing, Jianqing Limited, WIPO Case No. D2021-0405 (the “Third Linhope Case”) (together with the First Linhope Case and Second Linhope Case, the “Previous Linhope Cases”)). The Respondent’s Trade Mark was registered on December 6, 2019. This pattern suggests that the other three Disputed Domain Names were likely registered in or after November 2019, more than five years after the Second Complainant commenced trading under the House of CB brand. The Panel has visited the Internet Archive, and has found that the first archived use of the Disputed Domain Names occurred in November 2020, corresponding to the Disputed Domain Name <houseofcb.com.au> on November 4, 2020. The Respondent has presented no evidence that it registered the three Disputed Domain Names or was known by names corresponding with those Disputed Domain Names before the Second Complainant commenced trading under the House of CB brand in 2014. These factors are sufficient to establish a prima facie case under paragraph 4(a)(ii) of the Policy.

The Respondent has provided evidence of a number of trade mark registrations that it holds for HOUSE OF CB, presumably to establish the Respondent’s rights or legitimate interests in respect of the Disputed Domain Names.

The Panel is reluctant to go behind the Respondent’s Australian registered trade mark. A respondent’s trade mark registration corresponding to the disputed domain name will normally, but does not necessarily, establish that the respondent has rights or legitimate interests in that domain name. See section 2.7 of the auDA auDRP Overview 1.0.

A key issue here is whether the respondent’s trade mark registration is bona fide.

At the time the Disputed Domain Name <houseofcbonline.com.au> was registered, the Second Complainant had been operating under the House of CB Trade Mark for more than five years. As outlined above, this was likely also the case in respect of the other three Disputed Domain Names. The Respondent’s Australian trade mark registration is subject to a pending removal action for non-use.

In the Previous Linhope Cases, the Respondent began registering domain names targeting the Complainants in November 2019. The Respondent also began filing trade mark applications in December 2019.

This was within days of the First Complainant bringing the action in the High Court of England which resulted in an order prohibiting the Respondent from using the House of CB Trade Mark or any similar sign and requiring the Respondent to transfer various domain names featuring the House of CB Trade Mark to the First Complainant.

Here, the overall circumstances indicate that the Respondent’s filing of the trade mark was not bona fide – it appears that it was filed primarily to circumvent the application of the Policy, or as retribution, or to gain leverage in light of the legal action filed in the High Court of England. The Respondent did not file a response to assert otherwise.

In addition, as set out in the Second Linhope Case, the Complainants approached the registrar of the domain name <houseofcblondon.com> (which was also owned by the Respondent) in November 2019 regarding the infringement of its copyright by images used on that website and the registrar indicated that it intended to inform the reseller of that domain name of the complaint.

Images used on the websites at the Disputed Domain Names appear to have been copied from the Second Complainant’s website at “houseofcb.com”. Although the Disputed Domain Name <houseofcbonline.com.au> does not currently resolve to an active website, the Complainants provided evidence that it previously resolved to a website featuring images copied from the Second Complainant’s website. This is likely infringement of the Complainant’s copyright.

In addition, the Panel notes the stylized version of the HOUSE OF CB Trade Mark displayed at the websites of the Disputed Domain Names <houseofcb.com.au> and <houseofcbonline.com.au>, reproduced below:

The Panel finds that the abovementioned stylized version of the HOUSE OF CB Trade Mark displayed by the Respondent on some of its websites highly resembles the Complainant’s stylized version of the HOUSE OF CB Trade Mark displayed in the Complainant’s website at “www.houseofcb.com”, which is reproduced below:

In these circumstances, the Panel does not consider that the Respondent is making a bona fide offering of goods or services. The Second Complainant’s use of the HOUSE OF CB Trade Mark for a long period prior to the Respondent applying to register the Respondent’s Trade Mark, the Disputed Domain Name <houseofcbonline.com.au>, and in all likelihood, the three other Disputed Domain Names, indicates that the Respondent’s trade mark registrations were likely made in bad faith to circumvent the application of the Policy or otherwise prevent the Complainants’ exercising their rights. This is also supported by the High Court decision referred to by the Complainants.

The Complainants contend that the Respondent used a security tag on clothing purchased from the Disputed Domain Name <houseofcbonline.com.au> that is almost identical to a security tag used by the Second Complainant. This security tag was invented by a director of the Second Complainant and is marketed and sold by the Second Complainant to other retailers. The Complainants contend that this is further evidence that the Respondent is making elaborate efforts to closely resemble the Second Complainant’s business without authorisation. Again, the Respondent did not dispute this contention. This supports the Panel’s finding that the Respondent is not making a bona fide offering of goods or services.

The Panel considers that the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered or used the Disputed Domain Names in bad faith.

Registration in bad faith

At the time the Disputed Domain Name <houseofcbonline.com.au> was registered, the Second Complainant had been operating under the HOUSE OF CB Trade Mark for more than five years. This was likely also the case in respect of the other Disputed Domain Names but, as outlined above, the dates on which the other three Disputed Domain Names were registered is unclear. The names “House of CB” and “CB” are not derived from the Respondent’s name and are not descriptive of the products previously offered at the Disputed Domain Name <houseofcbonline.com.au> or currently offered at the other Disputed Domain Names. As outlined above, the Panel does not accept that the Respondent’s trade mark registrations for HOUSE OF CB were made in good faith for the purposes of the Policy.

The Respondent has a pattern of registering domain names to target the Trade Marks (see the Previous Linhope Cases).

As a result, the Panel considers that the Respondent was likely aware of the Trade Marks at the time the Disputed Domain Names were registered. The Respondent has not provided any explanation as to how it came up with the names “House of CB” or “CB” or why they selected the Disputed Domain Names. The Panel concludes that the Disputed Domain Names were likely registered to target the Complainants and to take advantage of the reputation that the Complainants had developed in the Trade Marks.

Use in bad faith

The Respondent has used the Disputed Domain Names to offer (or purport to offer) products for sale which directly compete with those offered by the Second Complainant. The Complainants submit that these products are either counterfeit, or are not actually sold at all. The Respondent did not dispute this. It does not appear that the Respondent is a reseller of the Second Complainant’s products, and even if the Respondent were to be a reseller, the composition of the Disputed Domain Name along with its use would not amount to a fair use by the Respondent. The websites at the Disputed Domain Names also feature images and other content which appears to have been copied from the Second Complainant’s website at “www.houseofcb.com” without authorisation. This indicates that the Respondent has used the Disputed Domain Names to take unfair advantage of the Complainants’ reputation and the Trade Marks, which amounts to bad faith use under the Policy. In particular, the Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or a product or service on those websites. The Panel finds that the Disputed Domain Names have been used in bad faith.

In light of the above, the Complainant is successful on the third element of the Policy.

7. Decision

For all 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, <cbdresses.com.au>, <cbstyles.com.au>, <houseofcb.com.au>, and <houseofcbonline.com.au> be transferred to the First Complainant.

John Swinson
Sole Panelist
Date: April 23, 2021