Case number | CAC-UDRP-106508 |
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Time of filing | 2024-05-14 09:24:34 |
Domain names | popjellycat.com, jellycatoysonline.shop, puppejellycat.com, jellycat-speichern.com, jellysales-us.com, jellycat.site, jellycat-us.com, jellycatverkoop.com, jellycatshop.com, jellycat-indonesia.com, jellycatsouthafrica.com, jellycasalesworld.shop, jellycaworlds.shop, shopjellycat.com, JELLYCATOUTLET.COM, jellycat-zacht.com, jellconline.shop, jellycast.club, jellycatpromo.com, jellycatgift.com, jellycatstore.store, jellycatstore.com, jellycatmall.com, jellgcat.com, jellycat-online.shop, jellycat-outlet.shop, jellycat-uk.shop, greatjellycats.com, jellycats.org, jellycatsuk.org, jellncat.com, jellycat-sale.shop |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | Jellycat Limited |
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Complainant representative
Organization | Stobbs IP (Stobbs IP) |
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Respondents
Name | BMorrissey Edward |
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Name | Bruce |
Name | DWilliams James |
Name | Ernest R Roberson |
Name | He Song |
Name | Heng Zhang |
Name | JamesBKile |
Name | JamesSRayburn |
Name | Jia Ling Yao |
Name | Jiahui Wu |
Name | Jonathan Clements |
Name | keynshirkeynshir |
Name | Kim Ormsby |
Name | Ming liu Luo |
Name | MKiferSheila |
Organization | Meng Saitao |
Name | Paul Clark |
Name | Petersen Lance |
Name | Qi Hanqiao |
Name | saitao meng |
Name | Shen Chuxue |
Name | Shui Xiaoling |
Name | SY Mai |
Name | Yan Hu |
Name | Young Colin |
Name | Zhang Qing |
Name | Zhao Manhan |
Name | Zhen Sheng Dai |
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.
The Complainant is the owner of the following trademark registrations in multiple countries set out below.
No. |
Country |
Registration Date |
Trademark |
1 |
Australia |
December 23, 2011 |
JELLYCAT |
2 |
Australia |
November 1, 2018 |
JELLYCAT |
3 |
Brazil |
August 2, 2016 |
JELLYCAT |
4 |
Canada |
May 29, 2013 |
JELLYCAT |
5 |
China |
August 21, 2018 |
JELLYCAT |
6 |
China |
February 7, 2024 |
JELLYCAT |
7 |
China |
November 14, 2018 |
JELLYCAT |
8 |
China |
June 28, 2023 |
JELLYCAT |
9 |
China |
January 28, 2019 |
JELLYCAT |
10 |
China |
March 7, 2024 |
JELLYCAT |
11 |
China |
August 21, 2018 |
JELLYCAT |
12 |
China |
August 21, 2018 |
JELLYCAT |
13 |
China |
January 28, 2019 |
JELLYCAT |
14 |
China |
August 21, 2018 |
JELLYCAT |
15 |
China |
July 21, 2022 |
JELLYCAT |
16 |
China |
February 21, 2012 |
JELLYCAT |
17 |
China |
July 21, 2022 |
JELLYCAT |
18 |
China |
January 28, 2019 |
JELLYCAT |
19 |
China |
August 21, 2018 |
JELLYCAT |
20 |
China |
June 28, 2020 |
JELLYCAT |
21 |
China |
January 28, 2019 |
JELLYCAT |
22 |
China |
May 28, 2021 |
JELLYCAT |
23 |
China |
December 14, 2019 |
JELLYCAT |
24 |
China |
July 14, 2020 |
JELLYCAT |
25 |
China |
August 21, 2018 |
JELLYCAT |
26 |
China |
November 7, 2023 |
JELLYCAT |
27 |
China |
December 7, 2018 |
JELLYCAT |
28 |
China |
January 7, 2019 |
JELLYCAT |
29 |
China |
August 14, 2020 |
JELLYCAT |
30 |
China |
November 14, 2018 |
JELLYCAT |
31 |
China |
August 21, 2018 |
JELLYCAT |
32 |
China |
August 21, 2018 |
JELLYCAT |
33 |
China |
February 14, 2019 |
JELLYCAT |
34 |
China |
March 14, 2020 |
JELLYCAT |
35 |
China |
July 7, 2023 |
JELLYCAT |
36 |
EUIPO |
September 1, 2000 |
JELLYCAT |
37 |
EUIPO |
October 12, 2017 |
JELLYCAT |
38 |
United Kingdom |
December 22, 2023 |
JELLYCAT LONDON FOR THE JOY OF IT. |
39 |
United Kingdom |
October 12, 2017 |
JELLYCAT |
40 |
United Kingdom |
December 10, 1999 |
JELLYCAT |
41 |
United Kingdom |
September 1, 2000 |
JELLYCAT |
42 |
United Kingdom |
March 8, 2024 |
JELLYCAT BOOKS LONDON |
43 |
Hong Kong |
July 29, 2021 |
JELLYCAT |
44 |
Hong Kong |
November 9, 2020 |
JELLYCAT |
45 |
Hong Kong |
September 10, 2020 |
JELLYCAT |
46 |
Hong Kong |
November 10, 2011 |
JELLYCAT |
47 |
Hong Kong |
September 10, 2020 |
JELLYCAT |
48 |
Indonesia |
February 22, 2016 |
JELLYCAT KEPALA KUCING |
49 |
Indonesia |
February 22, 2016 |
JELLYCAT |
50 |
India |
November 23, 2011 |
JELLYCAT |
51 |
Republic of Korea |
August 29, 2016 |
jELLYCAT |
52 |
Republic of Korea |
April 2, 2013 |
JELLYCAT |
53 |
Malaysia |
February 22, 2016 |
JELLYCAT |
54 |
New Zealand |
November 14, 2014 |
JELLYCAT |
55 |
Singapore |
December 16, 2010 |
jellycat |
56 |
Taiwan |
June 1, 2014 |
JELLYCAT |
57 |
United States (Federal) |
May 14, 2013 |
JELLYCAT BASHFUL |
58 |
United States (Federal) |
December 30, 2003 |
JELLYCAT |
59 |
Vietnam |
May 19, 2015 |
JELLYCAT JELLYCAT JELLY CAT JELYCAT JELY CAT |
60 |
South Africa |
October 28, 2019 |
JELLYCAT |
61 |
South Africa |
August 18, 2020 |
JELLYCAT |
The Complainant owns the domain name <jellycat.com> registered on January 13, 2000, and a significant portfolio of “JELLYCAT” domain names.
The Complainant is an iconic British brand. It has been renowned for its quirky and original toys since 1999. With a reputation for well-designed, high-quality products, the Complainant’s offerings are available both in-store and online globally, spanning retail shops, department stores, and boutiques across the UK, USA, Canada, Europe, Asia, and Australia.
Innovation is at the core of the Complainant's business, supported by an extensive portfolio of intellectual property rights. The Complainant's products are sold directly to consumers and through selected retailers in the UK, including prestigious department stores like John Lewis, Fenwick, Selfridges, and Harrods, as well as high-quality independent retailers. These products are also available online via the Complainant's website and those of its chosen distributors.
The Complainant owns several UK registered trademarks, including the mark "JELLYCAT" for stuffed toys. Additionally, the Complainant has a comprehensive schedule of its worldwide registrations protecting the "JELLYCAT" brand. The domain name <jellycat.com> has also served as the Complainant’s primary internet location since at least December 26, 2003, complemented by a significant portfolio of JELLYCAT domain names.
The UK market holds particular importance for the Complainant, where it has built a substantial reputation and considerable goodwill in the "JELLYCAT" sign. This brand has achieved iconic status in popular culture due to the extensive, geographically widespread, and long-term use of its trademarks, resulting in a high level of consumer awareness.
The Complainant is also highly active on social media, with notable followings of over 251,000 on TikTok and 372,000 on Instagram, as evidenced by the provided URLs. The hashtag #Jellycat has garnered over 3.4 billion views on TikTok. The brand's excellence is further demonstrated by numerous awards, including the Earnshaw Magazine’s Earnie Award in 2015 and 2018, and the Outstanding Achievement Award at The Greats Awards 2020.
There are 34 disputed domain names, the subject of the proceedings. The domain name <jellycat-indonesia.com> is subject to a signed Settlement Agreement.
The table below sets out important information pertaining to the registration of each of the disputed domain names.
No. |
Domain |
Registrar |
Date Created |
1 |
jellconline.shop |
ZHENGZHOU CENTURY CONNECT ELECTRONIC TECHNOLOGY CO., LTD |
February 4, 2024 |
2 |
jellgcat.com |
West263 International Limited |
November 20, 2023 |
3 |
jellncat.com |
West263 International Limited |
November 20, 2023 |
4 |
jellysales-us.com |
NameSilo, LLC |
April 23, 2023 |
5 |
jellycasalesworld.shop |
DDD TECHNOLOGY PTE. LTD. |
March 02, 2024 |
6 |
jellycaworlds.shop |
DDD TECHNOLOGY PTE. LTD. |
May 02, 2024 |
7 |
jellycast.club |
Gname.com Pte. Ltd. |
January 22, 2024 |
8 |
jellycat-indonesia.com |
Wix.Com Ltd. |
June 16, 2021 |
9 |
jellycat-online.shop |
Chengdu West Dimension Digital Technology Co., LTD |
December 11, 2023 |
10 |
jellycat-outlet.shop |
Chengdu West Dimension Digital Technology Co., LTD |
December 12, 2023 |
11 |
jellycat-sale.shop |
Chengdu West Dimension Digital Technology Co., LTD |
November 27, 2023 |
12 |
jellycat-speichern.com |
OwnRegistrar, Inc. |
September 07, 2023 |
13 |
jellycat-uk.shop |
Chengdu West Dimension Digital Technology Co., LTD |
November 28, 2023 |
14 |
jellycat-us.com |
OwnRegistrar, Inc. |
September 07, 2023 |
15 |
jellycat-zacht.com |
OwnRegistrar, Inc. |
September 11, 2023 |
16 |
jellycat.site |
CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD |
January 20, 2024 |
17 |
jellycatfactory.com |
GoDaddy.com, LLC |
December 15, 2023 |
18 |
jellycatgift.com |
West263 International Limited |
January 18, 2024 |
19 |
jellycatmall.com |
West263 International Limited |
January 23, 2024 |
20 |
jellycatoutlet.com |
GoDaddy.com, LLC |
December 23, 2023 |
21 |
jellycatoysonline.shop |
Sav.com, LLC |
September 13, 2023 |
22 |
jellycatpromo.com |
Gname.com Pte. Ltd. |
January 18, 2024 |
23 |
jellycatshop.com |
Dreamscape Networks International Pte Ltd |
October 04, 2022 |
24 |
jellycatstore.com |
West263 International Limited |
January 22, 2024 |
25 |
jellycatstore.store |
CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD |
April 07, 2024 |
26 |
jellycatverkoop.com |
OwnRegistrar, Inc. |
September 07, 2023 |
27 |
popjellycat.com |
Gname.com Pte. Ltd. |
January 29, 2024 |
28 |
puppejellycat.com |
Gname.com Pte. Ltd. |
January 29, 2024 |
29 |
shopjellycat.com |
Domain.com, LLC |
June 21, 2022 |
30 |
jellycatsouthafrica.com |
ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED |
December 05, 2023 |
31 |
greatjellycats.com |
Gname.com Pte. Ltd. |
January 23, 2024 |
32 |
jellycats.org |
West263 International Limited |
January 10, 2024 |
33 |
jellycatsb.shop |
GoDaddy.com, LLC |
December 15, 2023 |
34 |
jellycatsuk.org |
West263 International Limited |
January 03, 2024 |
The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.
The Respondents failed to file any administratively compliant response.
The Complainant has, to the satisfaction of the Panel, shown that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Panel accepts that the Complainant has rights by reason of its ownership of the registered trademark "JELLYCAT". The question is whether each of the disputed domain names is identical or confusingly similar to the Complainant’s trademark.
Whether a disputed domain name is identical or confusingly similar to a trademark can be determined by making a side-by-side comparison with the disputed domain name. A disputed domain name is identical to the trademark when it is a character for character match. It is confusingly similar when it varies the trademark by, for example, adding generic terms to the dominant part of the trademark.
The Complainant contends that panels have consistently held that domain names are considered identical or confusingly similar to a trademark when the domain name includes the trademark or a confusingly similar approximation, regardless of other terms in the domain name. They reference the case of Harley-Davidson Motor Company Inc. v Duc Tran The Deltavn (2024) CAC 105387 to support this contention.
This principle is consistent with section 1.8 of the WIPO Overview 3.0, which states that when the relevant trademark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, or otherwise, would not prevent a finding of confusing similarity under the first element of the Policy.
Turning to the application of the established principles to the present proceeding, the Complainant contends that the disputed domain names are identical and/or confusingly similar to that of the Complainant’s trademarks, and conveniently sets out its contentions in seven categories.
The following two categories incorporate in its entirety the Complainant’s trademark “"JELLYCAT" and can be summarised, together with the Panel’s findings, as follows:
Category |
Disputed Domain Names |
Complainant’s Contentions |
Panel‘s Findings |
1 |
jellycat-indonesia.com jellycat-online.shop jellycat-outlet.shop jellycat-sale.shop jellycat-speichern.com jellycat-uk.shop jellycat-us.com jellycat-zacht.com jellycat.site jellycatfactory.com jellycatgift.com jellycatmall.com jellycatoutlet.com jellycatoysonline.shop jellycatpromo.com jellycatshop.com jellycatstore.com jellycatstore.store jellycatverkoop.com popjellycat.com puppejellycat.com shopjellycat.com jellycatsouthafrica.com |
These disputed domain names use the Complainant’s trademark in its entirety with the addition of a descriptive or geographical term. The Complainant submits it is established under the UDRP the addition of a non-distinctive term in the domain string does not obviate a finding of confusing similarity. |
The Complainant’s trademark "JELLYCAT" is incorporated in its entirety, and therefore is confusingly similar to the Complainant’s trademark.
|
2 |
greatjellycats.com jellycats.org jellycatsb.shop jellycatsuk.org |
These disputed domain names are a mere single character different from the Complainant’s trademark, namely, the addition of the “s” character at the end of the Complainant’s "JELLYCAT" brand. |
The Complainant’s trademark "JELLYCAT" is incorporated in its entirety, and therefore is confusingly similar to the Complainant’s trademark.
|
Where the disputed domain names include in its entirety the Complainant’s trademark “JELLYCAT” as the dominant element, along with non-distinctive terms, whether they be descriptive, non-descriptive, generic, or geographic, the Panel considers that they do nothing to alter the overall impression in the eyes of the average internet users that these disputed domain names are confusingly similar to the Complainant’s trademark.
Accordingly, in categories 1 and 2 of the disputed domain names the Panel finds that a likelihood of confusion exists, and the second limb is made out in respect of the disputed domain names that incorporate in its entirety the Complainant’s trademark “JELLYCAT”.
The Panel will now consider the Complainant’s contentions for remaining five categories.
Category |
Disputed Domain Names |
Complainant’s Contentions |
Panel‘s Findings |
3 |
jellconline.shop |
Uses the abbreviated term "JELLC" which is confusingly similar to "JELLYCAT". The disputed domain name points to a website impersonating the Complainant. Relies on hidden links to direct internet users to an impersonation website. Evidence of actual confusion rarely comes to light. |
The use of the word "JELLC" in the context of a website that impersonates the Complainant and its trademark "JELLYCAT" is confusingly similar in approximation. The Panel accepts the Complainant’s contention. |
4 |
jellgcat.com jellncat.com |
These disputed domain names are typosquat domain names, both a mere single letter different from the Complainant’s trademark. Both domains swap the "y" character out for another character. Given the only character difference is within the middle of the domain string, it is less likely to be observed by the average internet user. |
The Panel considers that the incorrectly spelled version of the Complainant’s trademark, by replacing the letters "g" and "n" respectively, in the disputed domain names mimics the Complainant’s trademark and is a form of URL hijacking. The Panel accepts that this is a typosquatting of the Complainant’s legitimate website URL. |
5 |
jellysales-us.com |
Uses the abbreviated term "JELLY" which is confusingly similar to "JELLYCAT". The disputed domain name points to a website impersonating the Complainant. |
The term "JELLY" has a dictionary meaning. Used in conjunction with SALES-US does not, prima facie, show any connection with the Complainant’s trademark. It could refer to sales of jelly, i.e. a sweet or fruit flavoured dessert made with gelatin. The evidence shows, however, that the disputed domain name points to a website impersonating the Complainant. The Respondent has not filed an administratively compliant response. As such, on balance, the Panel considers that the use of the term "JELLY" in this context is confusingly similar to the Complainant’s trademark. |
6 |
jellycasalesworld.shop jellycaworlds.shop |
Uses the abbreviated term "JELLCA" which is confusingly similar to "JELLYCAT". The sign is a mere single character different from the Complainant’s trademark, namely, the "t" has been omitted from "JELLYCAT". One of the disputed domain names points to a website impersonating the Complainant. Regarding the other disputed domain name, the Complainant has received numerous complaints from customers who believed they were purchasing directly from the Complainant. |
The use of the word "JELLCA" in this context, and the evidence of customer confusion, supports the view that the disputed domain name is confusingly similar in approximation to the Complainant’s trademark 'JELLYCAT'. The Panel accepts the Complainant’s contention. |
7 |
jellycast.club |
The disputed domain name is a mere single character different from the Complainant’s trademark, namely, the addition of the "s" character to change "cat" to "cast". This disputed domain name previously pointed to an impersonation website. |
The Panel considers that inserting the letter “s” between the letters “a” and “t” in the disputed domain names, would not prevent a finding of confusing similarity to the Complainant’s trademark "JELLYCAT". There is also evidence that the disputed domain name previously pointed to an impersonation website, which the Panel accepts as uncontroverted.
|
For the reasons expressed in the Panel’s finding in the table above in respect of categories 3 to 7 of the disputed domain names, the Panel finds that a likelihood of confusion exists, and the second limb is made out.
It is also trite to state that the addition of the various gTLD suffixes do not add any distinctiveness to each of the disputed domain names and will be disregarded for the purposes of considering this ground.
Accordingly, the Panel considers that each of the disputed domain names is confusingly similar to the Complainant’s trademark "JELLYCAT", and this ground is made out.
The Complainant has, to the satisfaction of the Panel, shown the Respondents to have no rights or legitimate interests in respect of each of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D20000270.
If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.
The Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names, and put forward the following contentions:
Exploitation of Brand Reputation
The Complainant states that the Respondents are not affiliated with its business, and contends that the only plausible reason for the Respondents’ registration and use of the domain names is to exploit the well-established reputation of the Complainant’s "JELLYCAT" brand, particularly given its 25-year history and global presence since 1999.
Impersonation and Sale of Counterfeit Goods
The Complainant adduces evidence that the Respondents are using the disputed domain names to redirect to websites that impersonate the Complainant and sell counterfeit products. This misuse includes mimicking the official website’s design and using hidden links to deceive consumers.
Previous Panel Rulings
The Complainant relies on WIPO Overview 3.0, paragraph 2.13.1, and notes that prior panels have consistently ruled that domain names used for illegal activities, such as selling counterfeit goods, do not confer rights or legitimate interests to a respondent.
Absence of Any Known Rights
The Complainant argues that the Respondents have never been legitimately known by the name "JELLYCAT" and that the registration of the domain names was solely to leverage the Complainant’s goodwill, citing the case of Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, WIPO Case No. D2000-1244.
Commercial Gain and Misleading Practices
The Complainant contests any claim of non-commercial or fair use by the Respondents, asserting that the disputed domain names are clearly used for commercial gain through misleading practices, thus disqualifying the Respondents from a fair use defence.
The Panel accepts that the Complainant holds exclusive trademark rights predating the registration of all the disputed domain names by several decades. The evidence show that the Respondents have no rights or legitimate interests to use the Complainant's trademark in a confusingly similar manner within the disputed domain names.
The Complainant’s contentions are uncontradicted as there have not been any administratively compliant responses filed by the Respondents.
The Panel is prepared to accept the Complainant’s contention that the Respondents cannot demonstrate any legitimate offering of goods or services under the "JELLYCAT" trademark.
The evidence here also shows that each of the Respondents is not commonly known by the disputed domain names they registered, nor the Respondents have legitimate interest over the disputed domain names.
The Panel observes that there are a sizeable number of disputed domain names that collectively would have costs a significant sum of money to register. If any one or all the Respondents have any rights to the disputed domain names, then it is incumbent on them to have file an administratively compliant response.
Such omission is glaring, and the Panel can only infer that the Respondents’ use of the disputed domain names is aimed at commercial gain, misleadingly diverting consumers, and tarnishing the Complainant's trademark.
Given the evidence adduced by the Complainant of its portfolio of trademarks and wide reputation which the Panel accepts as evidencing the strength of its reputation, the Panel accepts and finds that each of the Respondents has no rights or legitimate interests to the disputed domain names.
The Complainant has, to the satisfaction of the Panel, shown that each of the disputed domain names has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith. The Complainant’s assertions, substantiated by evidence, point to a deliberate strategy by the Respondents to misuse the Complainant’s trademark "JELLYCAT" to mislead consumers and gain illicit financial benefits.
The Complainant relies on the following grounds:
Actual Knowledge of the Complainant's trademark
The Complainant contends that the Respondents were fully aware of the "JELLYCAT" trademark at the time of registering the disputed domain names. This is evidenced by a number of the Respondents’ actions that involve the use of the "JELLYCAT" trademark in its entirety within the domain names themselves and the corresponding websites, which were noted to aggressively mimic the Complainant’s branding and merchandise.
The incorporation of the identical trademark "JELLYCAT" combined with its distinctive character and widespread recognition due to the Complainant's longstanding use since 1999, underlines the improbability that the Respondents registered the domain names without knowledge of the Complainant's rights.
Intention to Attract for Commercial Gain
The Complainant contends that the Respondents' use of the disputed domain names serves the primary purpose of diverting internet traffic to the infringing websites for commercial gain.
By creating a likelihood of confusion with the Complainant’s trademark, the Respondents capitalise on the reputation of the "JELLYCAT" brand to attract users, who may believe that they are purchasing legitimate products directly from the Complainant.
Pattern of Conduct in Registering Domain Names
The Complainant contends that the Respondents have registered not just one, but multiple domain names incorporating the "JELLYCAT" trademark. This pattern of registering domain names that reflect well-known trademarks without any apparent justification or legitimate purpose other than to trade on the Complainant’s goodwill indicates a clear strategy to prevent the Complainant from reflecting its mark in corresponding domain names.
Using the Domain Names to Disrupt the Complainant’s Business
The Respondents' apparent intent to disrupt the Complainant’s business further compound the issue of bad faith. By directing potential customers away from the Complainant’s legitimate business channels to those selling counterfeit and potentially inferior products, the Respondents not only divert sales but potentially damages the reputation of the Complainant's brand.
The Respondents have not filed any administrative compliant responses. The Panel observes that after commencement of this proceeding, one respondent has settled the dispute with the Complainant by agreeing to transfer the disputed domain name to the Complainant.
In the current proceeding, given the world-wide reputation of the Complainant’s trademark "JELLYCAT", the Panel is prepared to infer that the Respondents had actual knowledge of the Complainant’s trademark at the time of registration, which strongly suggests bad faith.
Further, registration of multiple domain names in a manner that disrupts the business of a trademark holder also evidences registration in bad faith.
The Panel is prepared to infer, from the uncontradicted evidence, that the Respondents' use of the disputed domain names is to intentionally deceive consumers. The Panel accepts that this evidences bad faith where the domain name is used to attract users to a website for commercial gain by creating confusion regarding the source, sponsorship, affiliation, or endorsement of the website or products on it.
Accordingly, the Panel is prepared to draw the adverse inference that each of the Respondents registered the disputed domain names incorporating wholly or in part of the Complainant’s trademark "JELLYCAT" to take advantage of reputation of the Complainant’s trademark and the Complainant’s business goodwill.
The Panel need not consider additional contentions put forth by the Complainant as the above assertions and evidence adduced support the contention of registration and use in bad faith.
The Panel finds that this ground is made out.
Consolidation of the disputed domain names in a single dispute
The Complainant requests consolidation of the disputed domain names into a single proceeding.
Rule 10(e) empowers the Panel to decide such a request in accordance with the Policy and the Rules.
“Respondent” is defined in Rule 1 to mean “the holder of a domain-name registration against which a compliant is initiated”. Rule 3(c) provides that “the complaint may relate to more than one domain, provide that the domain names are registered by the same domain-name holder”.
If the registrants are in fact separate legal or beneficial entities the Policy requires a complainant to initiate separate proceedings against each registrant of the disputed domain names.
The “domain-name holder”, if its identity is disclosed, is usually the beneficial owner. If its identity is not disclosed, it is then a proxy holder. Even if the identity of the beneficial owner is determined, it is only prima facie identification of the putative registrant of the domain name and is not conclusive of the real identity of the beneficial owner as aliases could be used as the alter egos of the controlling entity.
A complainant bears the onus of proof. It is, therefore, important for a complainant to adduce evidence that establishes a common ownership or control that is being exercised over the disputed domain names or the websites to which the disputed domain names resolve. See Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; General Electric Company v Marketing Total S.A. WIPO Case No. D2007-1834.
The phrase “same domain-name holder” under Rule 3(c) has been construed broadly to include registrants who are not the same person, but circumstances point to the domain names being controlled by a single person or entity. See WIPO Jurisprudential Overview 3.0, Paragraph 4.11.2; Dr Ing. H.c.F. Porsche AG v Kentech Inc aka Helois Lab aka Orion Web aka Titan Net aka Panda Ventures aka Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO D2005-0890; Kimberly Clark Corporation v N/A, Po Ser and N/A, Hu Lim, WIPO D2009-1345.
Thus, the domain-name holder can either be the registrant or a person with “practical control” of the domain name.
Typically, the evidence would show that there are some matching details including entities, addresses, telephone numbers, and/or e-mail accounts.
The Panel refers to the table of disputed domain names set out in the Factual Background section.
The Complainant has provided evidence, including but not limited to, the use of privacy protection services, highly similar naming patterns, identical website content, and the use of the domain names for similar malicious activities targeting the Complainant's “JELLYCAT” trademark.
The Complainant also asserts commonalities in registrant data, such as identical e-mail addresses and physical addresses for ostensibly different registrants.
As an example, the Complainant refers to the domains <jellycatstore.com> and <jellycatmail.com>, along with others cited in the Amended Complaint, that use the same correspondence address, thereby suggesting that they are under the control of a single entity or operator.
While the evidence is not conclusive of the real identity of the beneficial owner, the Panel considers that the consistency in naming patterns, combined with identical contact information, and the use of similar content across all disputed domain names, strongly supports the Complainant’s assertion that these domain names are controlled by a common entity.
By the preponderance of the evidence adduced, and in the absence of any response from the Respondents to contradict these assertions, the Panel finds that the Complainant has satisfactorily demonstrated that the disputed domain names are subject to common control of a single person or entity, or a group of individuals acting in concert.
The Panel is persuaded that it is likely the motive is to hide the true identity of the registrant, and accordingly the Panel is satisfied by the Complainant’s evidence linking the registrants as being beneficially owned by a common entity or practically controlled by a single person or entity, or a group of individuals acting in concert.
The consolidation of these domain names into a single complaint is therefore appropriate and justifiable to ensure fairness and procedural efficiency.
Language of proceedings request
Rule 11(a) of the UDRP rules states:
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 conducting the administrative proceeding, the Panel is required to ensure under Rule 10 of the UDRP rules that the Parties are treated with equality and be given a fair opportunity to present its case.
The Complainant requests that the English language should be the language of the proceeding for the following reasons:
- The Complainant contends that the use of English will avoid delays and additional costs associated with translation, highlighting the necessity of conducting proceedings expeditiously and ensuring fairness.
- The Complainant asserts that the disputed domain names contain English words and that the associated websites are entirely in English, which implies that the Respondents have sufficient understanding of English to participate in this proceeding.
- Further, the content of the disputed domain names and the use of English terms support the assumption that the Respondents are conversant in English.
The Respondents have not filed any administratively compliant response to the Complainant’s Amended Complaint.
On balance, the Panel considers the proceedings can proceed in the English language given the disputed domain names use an English language trademark that is combined with an English language term.
In the circumstances, the Panel accepts the Complainant's request and considers that it is appropriate to proceed to determine the proceeding in the English language.
Notification of proceedings to the Respondents
When forwarding a Complaint, including any annexes, electronically to the Respondents, paragraph 2 of the Rules states that CAC shall employ reasonably available means calculated to achieve actual notice to the Respondents.
Paragraphs 2(a)(i) to (iii) set out the sort of measures to be employed to discharge CAC’s responsibility to achieve actual notice to the Respondents.
On June 20, 2024 the CAC by its non-standard communication stated as follows (omitting irrelevant parts):
Written notice of the Complaint, which was sent to the Respondent, Young Colin, returned back to the Czech Arbitration Court as undelivered.
Regarding the remaining Respondents – please be aware that neither the written notice of the Complaint nor the advice of delivery thereof was returned to the Czech Arbitration Court. The CAC is therefore unaware whether the written notice was received by these Respondents or not.
As far as the e-mail notice is concerned, CAC received notifications that the e-mails sent (some both in English and Chinese) to postmaster@greatjellycats.com, postmaster@jellconline.shop, connect@handicraftzio.com, postmaster@jellycatstore.store, postmaster@jellgcat.com, postmaster@jellncat.com, postmaster@jellycast.club, postmaster@jellycat.site, postmaster@jellycatgift.com, postmaster@jellycat-indonesia.com, postmaster@jellycatmall.com, postmaster@jellycatoutlet.com, postmaster@jellycatoysonline.shop, brucemweigand@rhyta.com, postmaster@jellycatpromo.com, postmaster@jellycat-sale.shop, postmaster@jellycatshop.com, postmaster@jellycatsouthafrica.com, postmaster@jellycat-speichern.com, postmaster@jellycatstore.com, postmaster@jellycatstore.store, postmaster@jellycat-us.com, postmaster@jellycatverkoop.com, postmaster@jellycat-zacht.com, postmaster@popjellycat.com, postmaster@puppejellycat.com, postmaster@shopjellycat.com, postmaster@jellycaworlds.shop, postmaster@jellycasalesworld.shop, postmaster@jellycat-online.shop, postmaster@jellycatoutlet.shop, postmaster@jellycat-uk.shop, 9v3g1b0qtvgmt@163.com, postmaster@jellycatsuk.org and to postmaster@jellycats.org were returned back as undelivered as the e-mail addresses had permanent fatal errors.
The email notice were also sent (some both in English and Chinese) to edwardbmorrissey145@mailburst.live, jamesdwilliams367@mailburst.live, ernestrroberson21@centervortex.live, expeditio.rodg.067094@gmail.com, 584915033@qq.com, jamesbkile81@systemleap.live, jamessrayburn20@systemleap.live, jayyao922@gmail.com, jonathanclements08@cxtmail.com, cherylmaggieaa4262@gmail.com, kim@grovia.com, qiaoyou32848850@163.com, sheilamkifer43@centervortex.live, 289375676@qq.com, lancepetersen783@mailstorm.live, lifeatcomplexes@gmail.com, ayongznasret5@outlook.in, thuretarnetau@hotmail.com, m17876807378@126.com, colinyoung9632@mailstorm.live, 1002@maikongjian.com, sophiahongkong@outlook.com, but CAC never received any proof of delivery or notification of undelivery to these addresses.
The e-mail notice was also sent to info@tf-yours.com. On May 30, 2024 the CAC received e-mail response from the Respondent, Jiahui Wu, that he is willing to transfer the domain name jellycat-indonesia.com to the Complainant.
On the disputed site jellycaworlds.shop could be found further e-mail address.
No further e-mail addresses could be found on the remaining disputed sites.
According to CAC’S records, the Respondent, Jiahui Wu, accessed the online platform on May 30, 2024.
The other remaining Respondents never accessed the online platform.
On June 3, 2024 the Complainant has provided CAC on the platform with the signed Settlement Agreement regarding the domain name <jellycat-indonesia.com>. At this moment CAC is waiting for the confirmation from the registrar, that the domain name is successfully with the Complainant.
Also, the Complainant was informed, that the domain name <shopjellycat.com> expires on June 21, 2024. The Complainant asked the registrar for the renewal of the domain name. On June 3, 2024 the registrar confirmed the renewal until June 21, 2025.
Given the reasonable measures employed by CAC as set out in the above non-standard communication, the Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
The Complainant owns the international trademark “JELLYCAT” and the domain name <jellycat.com>. The Complainant uses its trademark and domain name in connection with its goods or services.
Between January 2023 and May 2024, 34 domain names were registered within a short period of each other. The evidence suggests that a single person or entity, or a group of individuals acting in concert, owns and has practical control of the 34 disputed domain names.
The Complainant requests consolidation into a single proceeding. The Panel is satisfied upon the evidence adduced that consolidation is appropriate as the evidence shows that the several respondents are likely to be aliases and to be treated as alter egos of a controlling entity.
The Complainant also requests that English be the language of the proceedings. The Panel is satisfied the Respondents have a good understanding of English, as demonstrated by the English content on the disputed domain names and their use of common English words. Conducting the proceedings in English will ensure fairness and maintain the efficiency of the process.
The Complainant challenges the registration of the disputed domain names under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy and seeks relief that the disputed domain names be transferred to the Complainant.
The Respondents failed to file any administratively compliant response.
For the reasons articulated in the Panel’s reasons above, the Complainant has satisfied the Panel of the following:
(a) Each of the disputed domain names is confusingly similar to the Complainant’s widely known “JELLYCAT” trademark.
(b) The Respondents have no rights or legitimate interests in respect of the disputed domain names.
(c) The disputed domain names have been registered and are being used in bad faith.
- popjellycat.com: Transferred
- jellycatoysonline.shop: Transferred
- puppejellycat.com: Transferred
- jellycat-speichern.com: Transferred
- jellysales-us.com: Transferred
- jellycat.site: Transferred
- jellycat-us.com: Transferred
- jellycatverkoop.com: Transferred
- jellycatshop.com: Transferred
- jellycat-indonesia.com: Settlement
- jellycatsouthafrica.com: Transferred
- jellycasalesworld.shop: Transferred
- jellycaworlds.shop: Transferred
- shopjellycat.com: Transferred
- JELLYCATOUTLET.COM: Transferred
- jellycat-zacht.com: Transferred
- jellconline.shop: Transferred
- jellycast.club: Transferred
- jellycatpromo.com: Transferred
- jellycatgift.com: Transferred
- jellycatstore.store: Transferred
- jellycatstore.com: Transferred
- jellycatmall.com: Transferred
- jellgcat.com: Transferred
- jellycat-online.shop: Transferred
- jellycat-outlet.shop: Transferred
- jellycat-uk.shop: Transferred
- greatjellycats.com: Transferred
- jellycats.org: Transferred
- jellycatsuk.org: Transferred
- jellncat.com: Transferred
- jellycat-sale.shop: Transferred
PANELLISTS
Name | William Lye OAM KC |
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