The Complainant is Iron Lion Entries, LLC, United States of America (“United States”), represented by Waller Lansden Dortch & Davis, LLP, United States.
The Respondent is Lion Iron Doors, Inc., United States / Lion Iron Doors Co. Ltd (厦门金狮王子铁艺有限公司), China, self-represented.
The disputed domain name <lionirondoors.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2020, the Registrar transmitted by email to the Center its verification response.
On February 7, 2020, the Center transmitted an email in Chinese and English to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 10, 2020. The Respondent did not comment on the language of the proceeding.
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 in Chinese and English of the Complaint, and the proceedings commenced on February 14, 2020. On February 27, 2020, the Complainant made a supplemental filing. In accordance with the Rules, paragraph 5, the original due date for Response was March 5, 2020. Pursuant to a request from the Respondent, the due date for Response was extended to March 9, 2020. The Response was filed in Chinese with the Center on March 8, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 27, 2020. 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.
Both these trademark registrations include claims of first use on October 28, 2010 and first use in commerce on January 19, 2011. These marks are both registered in respect of wrought iron doors, gates, railings and structural parts therefor in international class 6. They both disclaim any exclusive right to the use of IRON and ENTRIES apart from the marks as shown. The Complainant also holds United States trademark registration number 5288475 registered on September 19, 2017 for the following mark:
This trademark registration includes claims of first use on September 6, 2013 and first use in commerce on February 25, 2014. This mark is registered in respect of on-line retail store services featuring LED lighting fixtures; retail store services featuring LED lighting fixtures; wholesale distributorships featuring LED lighting fixtures in international class 35. All three trademark registrations remain current. The Complainant also registered the domain name <ironlionentries.com> on October 20, 2010, which it uses in connection with a website where it provides information about itself and its goods and services.
The Respondent Lion Iron Doors Co. Ltd (厦门金狮王子铁艺有限公司) is a Chinese company that provides iron doors. It is the registrant of the disputed domain name. Its contact person in the Registrar’s WhoIs database is an individual named Richard Chen and its contact email address is in the domain name <irondoorandgate.com>. Mr. Chen incorporated the Respondent “Lion Iron Doors, Inc.” in California, United States on July 29, 2019. The Respondent has a Facebook page titled “Lion Iron Doors” that indicates the Respondent has a factory in China and sells in the United States. The evidence includes Facebook advertising receipts for the promotion of “Lion Iron Doors” between January and June 2019. The evidence also includes a series of invoices issued by “Lion Iron Doors Co. Ltd” (or “Lion Iron Doors”) between September and November 2019, which display the disputed domain name in the company’s website address.
The disputed domain name was registered on November 3, 2016 and resolves to a website in English offering wrought iron doors for sale. The website prominently displays a “Lion Iron Doors” logo.
The evidence on record includes an instance of actual confusion where a Google search for “Lion Iron Doors” returned the Respondent’s website as the top unsponsored result but information regarding the Complainant, evidently generated by Google reviews, was displayed alongside.
The Respondent Lion Iron Doors, Inc. filed United States trademark application number 88672530 for KING LION on October 29, 2019 in respect of metal doors and other goods in international class 6. The Complainant filed a letter of protest regarding this application with the United States Patent and Trademark Office on December 31, 2019. The application was published for opposition on March 17, 2020.
The Complainant’s legal representative sent a notice of trademark infringement to the Respondent Lion Iron Doors, Inc. on December 31, 2019, prior to filing the Complaint. Upon the commencement of this proceeding on February 14, 2020, Mr. Chen sent an email communication to the Complainant’s legal representative noting the cost and time involved in legal process and offering to settle the dispute. He asked how much money the Complainant would pay to buy the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant has widely used IRON LION in commerce since 2010, prior to the Respondent’s registration of the disputed domain name. During this time, the Complainant has accrued substantial common law rights therein. The Complainant’s ownership of United States trademark registrations for IRON LION ENTRIES and IRON LION is additional evidence that the Complainant has valid trademark rights in such marks. The disputed domain name incorporates both terms of the Complainant’s IRON LION mark and uses one additional term, “doors”, which is descriptive and synonymous with the term ENTRIES in two of the Complainant’s marks. The use of the descriptive synonym “doors” does not alleviate the likelihood of confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related to, affiliated with, endorsed by, connected to, nor otherwise associated with the Complainant. The Respondent has not sought from the Complainant, nor has the Complainant granted to the Respondent, authorization, permission, or license to use the Complainant’s marks. The Respondent cannot in good faith claim that it registered and uses the disputed domain name without notice of the Complainant’s marks. The distinctive nature of IRON LION and the Respondent’s combination of those terms with a word that is synonymous with “entries” illustrate that the Respondent has deliberately used the disputed domain name with the intention to create an impression of association with the Complainant. The Respondent cannot establish a substantial reputation independent of the Complainant and its marks, not only because of the confusing similarity of the disputed domain name but because of the bona fide instances of false associations, such as actual confusion by consumers between the Respondent and the Complainant, and search engine results conflating the two. The Respondent is not making a legitimate noncommercial use of the disputed domain name because it takes visitors to a website where it offers products for sale, which products are similar to those offered by the Complainant.
The disputed domain name was registered and is being used in bad faith. The Complainant is well known to consumers. The Respondent knowingly chose a domain name that is virtually identical to the Complainant’s marks. The Respondent is trading on the Complainant’s trademark rights and creating a likelihood of consumer confusion. The entirety of the Respondent’s actions with respect to the disputed domain name have all been undertaken in bad faith, from its initial registration, to the uses of confusingly similar marks, with the offer for sale of various, similar goods. The Respondent takes no steps to provide any sort of disclaimer or dissociation between itself and the Complainant.
The disputed domain name is not identical or confusingly similar to the Complainant’s IRON LION and IRON LION ENTRIES trademarks. The main part of the disputed domain name is “lionirondoors” which consists of the English words “lion”, “iron”, and “doors” in that order. “Iron doors” is a generic phrase. The disputed domain name clearly differs in its composition from the Complainant’s trademarks and will not cause confusion. The content of the website associated with the domain name should be disregarded when assessing confusing similarity under the first element. The evidence on the record does not indicate that the Complainant’s IRON LION and IRON LION ENTRIES trademarks are well-known.
The Respondent enjoys rights and legitimate interests in respect of the disputed domain name. The Respondent was incorporated in California on July 29, 2019 under the name “Lion Iron Doors Inc.” The main part of the disputed domain name is identical to the Respondent’s trade name. The Respondent has also filed United States trademark application number 88672530 for KING LION specifying metal doors and other goods. The Respondent has been using the designation “lionirondoors” on its website, on invoices and in advertising on Facebook since before it received notice of the Complaint. The Respondent has always used the disputed domain name reasonably without any intention to mislead consumers or tarnish the Complainant's trademarks for commercial gain.
The disputed domain name was not registered and is not being used in bad faith. The Respondent has trademark rights in “LION IRON DOORS”. The Complainant and the Respondent are located in different states of the United States and are not competitors. The main purpose of the Respondent's registration of the domain name is for its own business use, not to damage the Complainant’s business. Given that many different parties have applied for IRON LION and IRON LION-related trademarks, the Respondent did not target the Complainant’s trademarks. The Complainant only provides evidence from its own website, not third party media reports so it is impossible to find that it has a reputation in its trademarks, let alone that the Respondent knew of those trademarks at the time of registration of the disputed domain name. The Complainant cannot monopolize all trademarks and domain names containing “Lion Iron” lest this destroy fair competition in the entire market. The Respondent registered the disputed domain name lawfully and did not sell, lease or otherwise transfer the disputed domain name to the Complainant or its competitor. The purpose of the Respondent’s email to the Complainant’s legal representative was to settle the dispute.
The Complaint was filed in bad faith. The Respondent registered the disputed domain name in November 2016 but the Complainant did not file the Complaint until January 2020, thus the Complaint constitutes reverse domain name hijacking.
The Complaint and Response both refer to Lion Irons Doors, Inc. as Respondent. The Registrar confirmed that Lion Iron Doors Co. Ltd (厦门金狮王子铁艺有限公司) is the registrant of the disputed domain name. Lion Irons Doors, Inc. and Lion Iron Doors Co. Ltd are both evidently under the common control of Richard Chen. The Response and other communications were transmitted to the Complainant and the Center by Mr. Chen from the disputed domain name contact email address indicated in the Registrar’s verification response. The Panel determines that each of Lion Irons Doors, Inc. and Lion Iron Doors Co. Ltd (厦门金狮王子铁艺有限公司) is the Respondent in this proceeding. They are referred to below individually and collectively as “the Respondent”, unless otherwise indicated.
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 is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent is familiar with the English language as evidenced by the facts that it has established a business location within the United States, it uses a United States telephone number to offer sales from its website, the disputed domain name is comprised of English language words and the website associated with the disputed domain name is written entirelyin English.
Paragraph 10(b) and (c) of the Rules requires 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 appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in Chinese. However, the Respondent corresponded with the Complainant’s legal representative during this proceeding in English, the website to which the disputed domain name resolves is in English, and the Response includes passages in English, all of which indicates that the Respondent is able to understand that language. The Panel also notes that the Respondent did not comment on the language of the proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting all documents filed in their original version and rendering this decision in English will not cause unfairness 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 but that it will accept all documents as filed without requiring a translation.
The Complainant made an unsolicited supplemental filing on February 27, 2020, prior to receipt of the Response. The Response included comments on the supplemental filing.
Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) of the Rules require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Accordingly, the Panel will only permit the supplemental filing in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint.
The Panel observes that the Complainant’s supplemental filing attached an email communication from the Respondent dated February 14, 2020. This evidence, which is relevant to the issues in dispute, did not exist at the date of the Complaint. The Respondent has taken the opportunity to address this evidence in the Response. In these exceptional circumstances, the Panel decides to accept the supplemental filing as part of the record of this proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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.
The Complainant must prevail on all three elements for its claim to succeed. The Complainant bears the burden of proof of each of these elements.
As noted above, the Complainant has a number of registered marks (e.g., IRON LION ENTRIES (with disclaimer), and IRON LION and device); it clearly therefore has standing to bring a complaint.
The Complainant also asserts unregistered rights in the name “Iron Lion”. In order to establish such rights for the purposes of the UDRP, the Complainant must show that Iron Lion has become a distinctive identifier that consumers associate with the Complainant’s goods or services. Relevant evidence of such acquired distinctiveness or secondary meaning includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition and consumer surveys. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”), section 1.3.
The record of the present proceeding contains little such evidence. The evidence consists of current and archived screenshots of the Complainant’s own website, the Complainant’s listing on a home design website, and the Complainant’s trademark registrations. The websites refer to “Iron Lion Entries”. The trademark registrations are considered below. Based on this evidence, the Panel is unable to find that the Complainant has successfully established unregistered trademark rights in IRON LION for the purposes of the Policy.
The Complainant, as mentioned, also asserts registered rights in various trademarks. Based on the evidence submitted, the Panel finds that the Complainant has rights in the IRON LION ENTRIES trademark. In light of the Panel’s findings below, it is unnecessary to compare the disputed domain name with the other trademarks in which the Complainant has rights.
The Panel recalls that the first element of the Policy functions primarily as a standing requirement. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See WIPO Overview 3.0, section 1.7; Collision 1, Inc. v. 1Collision Network, WIPO Case No. D2014-1461; Sticker Face, LLC. v. Yunfeng Gao, ?????????????, and Yunfeng Gao, HarbinMaiyuanElectronic Commerce Co., Ltd., WIPO Case No. D2019-2892.
In the present case, the disputed domain name contains the two initial words of the Complainant’s IRON LION ENTRIES trademark(“iron” and “lion”) albeit in reverse order. Although the disputed domain name does not contain the last word of the trademark (“entries”), it does include the dominant element of that trademark (“lion”), which is the only word that the trademark registration does not disclaim. The operative elements of the disputed domain name are not made up exclusively or primarily of terms that are disclaimed in the Complainant’s trademark registrations.
The disputed domain name includes the additional dictionary word “doors”. This does not however distinguish the disputed domain name from the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, i.e., “.com”. However, as a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s (registered) trademarks. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
In view of the Panel’s findings in Section 6.2C below, the Panel does not need to consider the second element in paragraph 4(a) of the Policy.
The third element in paragraph 4(a) of the Policy requires a complainant to prove that the disputed domain name has been registered in bad faith and that it is being used in bad faith. Failure to prove either of these requirements will result in denial of the Complaint.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstance are as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark 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 [disputed] domain name;
(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] website or location or of a product or service on [the respondent’s] website or location.”
The disputed domain name was registered in 2016, after the Complainant’s registered rights in the IRON LION ENTRIES marks accrued. The disputed domain name was registered before the IRON LION and device mark was registered but it is unnecessary to consider that mark further given that (a) the Complainant’s other trademarks were registered prior to the disputed domain name; and (b) there is no evidence on the record that the Complainant has used the IRON LION and device mark.
The Panel notes that two of the three words in the disputed domain name (“iron doors”) describe the Respondent’s goods. The choice of those words, on their own, does not imply any awareness of the Complainant or its trademarks. The other word in the disputed domain name (“lion”) is not a coined word either. The question is whether the Respondent combined that dictionary word with the two descriptive words in the disputed domain name in order to target the Complainant’s marks.
The word “lion” is a translation of a word that appears in the Respondent’s Chinese company name “厦门金狮王子铁艺有限公司”, which can be translated as “Xiamen Golden Lion Prince Iron Art Co. Ltd”. However, there are considerable differences between that name and the English name that the Respondent provided to the Registrar (“Lion Iron Doors Co. Ltd”), which contains the operative elements of the disputed domain name. This evidence is inconclusive as to whether the Respondent chose the word “lion” with “iron doors” innocently, or omitted the other words from its Chinese name with knowledge of the Complainant’s mark.
It is equally unclear why the Respondent applied for a trademark on the different “king lion” term.
The Complainant argues that it is well known to consumers. However, the Panel sees relatively little evidence on the record of the Complainant’s reputation, particularly during the time prior to the registration of the disputed domain name in 2016. The evidence chiefly consists of current and archived screenshots of the Complainant’s own website and its listing on a home design website. The current screenshots of the Complainant’s own website post-date the registration of the disputed domain name by three years. The archived screenshots date from as early as 2013 but they appear to show only a single webpage using the IRON LION ENTRIES mark and do not evidence any third party awareness of that mark. The home design website contains fairly modest evidence of the Complainant’s reputation and little of that evidence may relate to the period prior to 2016. The Panel does not consider that this evidence shows that the Complainant’s mark was well known nor that it had sufficient reputation to draw the inference that the Respondent knew, or should have known, of its existence at the time of registration of the disputed domain name.
On the other hand, the Panel notes that the Respondent operates in the same niche market as the Complainant for wrought iron doors. This increases the possibility that the Respondent knew, or should have known, of the existence of the Complainant, at least at the time that it entered the United States market in 2019.
The Panel has weighed the evidence and recalls that the Complainant bears the burden of proof. Based on the present record, the Panel finds that the claim fails due to insufficient evidence of reputation that would allow the Panel to draw the inference that, on the balance of probabilities, the Respondent chose the disputed domain name in bad faith to target any of the Complainant’s trademarks within the circumstances of paragraph 4(b)(iv) as set out above. That is not to say that a more complete investigation would not reveal evidence supporting such inference – it very well may, but that such evidence has not been presented in this limited forum (which the Panel notes does not (by design) provide for discovery or cross-examination).
The Complainant also refers to the Respondent’s email of February 14, 2020 in which the Respondent enquired how much money the Complainant would offer to buy the disputed domain name to settle this dispute. The Panel notes that the Respondent is operating an actual business that happens to be importing and selling wrought iron doors and does not find that the terms of this email, or the circumstances of this case, provide sufficiently clear evidence to invoke paragraph 4(b)(i) as set out above.
The Panel recalls that the UDRP was designed to address a narrow class of domain name disputes, i.e., cases of abusive, bad faith domain name registrations often called cybersquatting. More complex issues, including trademark infringement on the Internet, fall outside the scope of the Policy. See, for example, Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313; Cerruti 1881 s.a.s. v. Gurpreet Johar,WIPO Case No. D2012-1574. The Panel notes that this is just one such case, and that the present Decision does not prevent either Party from pursuing their dispute, including as regards trademark infringement, in a court of competent jurisdiction.
Therefore, based on the present record, the Panel does not find that the Complainant has met its burden under the Policy.
The Respondent alleges that the Complaint was filed in bad faith because the Respondent registered the disputed domain name in November 2016 but the Complainant did not file the Complaint until January 2020.
The Complainant submits that it sent its notice of trademark infringement to the Respondent upon its discovery of the Respondent’s registration and use of the disputed domain name.
The Panel does not consider that the timing of the Complaint is indicative of bad faith, particularly considering that the Respondent did not promote the website associated with the disputed domain name until 2019.
There is no basis on the record before the Panel to make the finding requested by the Respondent, and particularly noting the questions presented (including as to possible trademark infringement) the Panel questions such claim being advanced by the Respondent.
For the foregoing reasons, the Complaint is denied.
Date: April 22, 2020
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