Decision for dispute CAC-UDRP-107946

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the following registered trademarks:                      

The Complainant also asserts the following rights in respect of domain names and social media platforms:

The Complainant was founded in 1920 by Ehrhardt Koch and is headquartered in Buffalo, New York. It is an American headwear manufacturer and the exclusive supplier of baseball caps for Major League Baseball (MLB) since 1993.

Over the years, the Complainant has expanded its collaborations and licensing agreements to include leading sports leagues such as the National Football League, National Basketball Association, Canadian Football League, Rugby League World Cup, National Hockey League, Australian Big Bash League, and Manchester United.

The brand “NEW ERA” is recognised as an icon in U.S. youth culture, particularly in hip-hop music and fashion, producing over 30 million caps annually for sale in more than 40 countries.

The Complainant employs around 1,500 people and maintains significant manufacturing in the United States, with only 9 years of offshore production. In August 2024, it acquired ’47 and continues to distribute its products globally through both online and retail channels.

The Complainant actively engages with consumers on Chinese social media platforms and e-commerce channels; collaborates with influencers; and conducts promotional campaigns and branded content. Its products are available through two of the largest online retail platforms in China.

The “NEW ERA” brand has also received prominent coverage in leading Chinese fashion publications, including VOGUE China, Elle China, and Cosmopolitan China, which have highlighted its influence on urban fashion and youth culture. These media features reflect the brand’s recognition and cultural relevance in China, supporting its reputation as a well-known trademark in the local market.

The disputed domain name <newera-mx.com> was registered on June 26, 2025.

The disputed domain name resolves to a website that offers counterfeit versions of the Complainant’s products and uses its trademark to impersonate the Complainant.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name 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 principles to determine whether a disputed domain name is identical or confusingly similar to a trademark are uncontroversial. Essentially, the approach is to do a side-by-side comparison with the disputed domain name.  See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.

 A disputed domain name is identical to a complainant’s registered 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.

 It is also well established that a domain name that wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for UDRP purposes.  See WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin.

Here, the disputed domain name fully incorporates the Complainant’s trademark “NEW ERA”, with the only differences being the omission of a space separating the terms “new” and “era”, and the additions of the hyphen “-“ and geographical indicator “MX” following the trademark.

The Panel considers that these omissions and additions are insufficient to avoid a finding of confusing similarity as the dominant and distinct element is the term “newera”. This is clearly recognisable even without the space separating the terms “new” and “era”.

 The Panel also considers that the inclusion of the geographical term “mx” is likely to create the false impression that the disputed domain name has a connection with the Complainant’s commercial activities in Mexico, given its trademark registration in that country and its domain name <newera.mx>.

 It is also trite to state that the addition of the gTLD “.com” to the disputed domain name does not add any distinctiveness to the disputed domain name and will be disregarded for the purposes of considering this ground. See WIPO Jurisprudential Overview 3.0, 1.1.

Accordingly, the Panel considers that this ground is made out.

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The principles to guide the Panel’s determination of this element are also uncontroversial but worth restating.

A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. 

This onus on a complainant should not be unduly onerous as proving a negative is inherently more difficult than establishing a positive fact.  It is sufficient for a complainant to present a prima facie case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

The mere act of registering a domain name does not per se confer rights or legitimate interest in the domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. If it were so, then all registrants would have such rights or interests upon registration of a domain name, and no complainant could satisfy this element. See Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 and National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118.

If the respondent fails to discharge the burden, paragraph 4(a)(ii) of the Policy is satisfied.

Here, there is no evidence that the Respondent holds any trademark rights to the disputed domain name.  The disputed domain name was registered well after the Complainant’s trademark was registered.

The Complainant asserts that the Respondent is neither a licensee nor an authorised agent of the Complainant, nor has been granted any permission to use the Complainant’s trademark, register or use the disputed domain name. 

The Panel accepts this unchallenged assertion.

From the evidence adduced, the Respondent is not commonly known by the disputed domain name.

The Respondent has not filed any administrative compliant response. As such, there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Panel also notes that on August 19, 2025 the Complainant sent the Respondent an infringement notice, to which the Respondent has not provided any response.

The Complainant also adduced evidence that shows the disputed domain name resolves to a website where the Complainant’s trademark is displayed, and counterfeit products are offered for sale.  The Panel considers that such conduct clearly demonstrates that the disputed domain name is not being used for any legitimate purpose.

Given the contentions and evidence adduced are unrefuted, the Panel finds there is no affiliation between the Complainant and Respondent that would give rise to any authorisation or licence to use the Complainant’s trademark or to apply for the registration of the disputed domain name.

The Panel is prepared to accept and find that the Respondent’s purported use of the disputed domain name is not a bona fide offer of goods or services or a legitimate use of the domain name as there is a high likelihood of misleading consumers into believing that they are accessing the Complainant’s website.

Accordingly, the Panel finds this ground made out.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Complainant must demonstrate that the disputed domain name was registered and is being used in bad faith.

Registration and use of a domain name in bad faith may be found where a respondent knew or should have known of the complainant and its trademark rights at the time when it registered or acquired the domain name, and the respondent proceeded to use the domain name intentionally by attempting to target the complainant.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances, if found to be present, as evidence of registration and use of a domain name in bad faith.

The Complainant has established its long-standing registrations of its trademark, domain names, and broad commercial reputation globally preceding the registration of the disputed domain name.

Here, the Complainant’s trademark is incorporated in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that this was done by the Respondent with knowledge or awareness of the Complainant’s reputation and trademark rights.  The Panel is prepared to infer that the Respondent registered the disputed domain name with the apparent intent to exploit consumer recognition of the Complainant’s brand. 

The Panel is also satisfied that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The Panel finds that the disputed domain name’s website purports to impersonate the Complainant and its products.  This is likely to mislead consumers as to the source, sponsorship, affiliation, or endorsement of the website and its goods. 

The Panel finds that such conduct is designed to divert traffic intended for the Complainant thereby taking advantage of the Complainant’s reputation and trademark for the Respondent's own financial benefit.

Given the Respondent’s failure to file any administrative compliant response, the Panel finds that the Respondent’s conduct amounts to bad faith in contravention of paragraph 4(b)(iv).

Accordingly, the Panel accepts that the disputed domain name was registered by the Respondent and used in bad faith.

Language of the proceedings

On September 22, 2025, the Complainant filed a non-standard communication and requested that the proceedings be in English, despite the language of the Registration Agreement for the disputed domain name being in Chinese.

Rule 11 provides that, unless otherwise agreed to by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceedings 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 proceedings.

The Complainant asserts that the Respondent has familiarity with the English language for the following reasons:

• The disputed domain name is made up of Latin characters and contains the widely recognised gTLD term “.com,” which is the abbreviation of the English word “commercial.”
• The Complainant is renowned worldwide in the headwear sector. The Respondent is impersonating the Complainant’s official website and cannot plausibly claim to be unaware of the Complainant by ignoring the relevance of the English language when targeting the Complainant’s business.
• The Respondent uses Anglophone terms like “multicolor” on the website associated with the disputed domain name, which shows the Respondent’s active use of the English language to appeal to an international audience.
• Requiring translation of the Complaint into Chinese would result in unnecessary costs and delays, which would be procedurally unfair and contrary to the UDRP’s aim of efficient dispute resolution.

The Panel accepts the Complainant’s contention that it would be disproportionate to require the Complainant to bear the costs of translation, which will likely further delay the proceedings.

As such, the Panel is prepared to draw the inference that the Respondent has apparent familiarity with the English language.

Further, the Panel considers that the CAC has taken reasonable steps to notify the Respondent of the administrative proceedings, to which there has been no administrative compliant response received from the Respondent.

Accordingly, the Panel will proceed to determine this proceeding in the English language.

Notification of proceedings to the Respondent

When forwarding a Complaint, including any annexes, electronically to the Respondent, paragraph 2 of the Rules states that CAC shall employ reasonably available means calculated to achieve actual notice to the Respondent.

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 Respondent.

On October 14, 2025 the CAC by its non-standard communication stated as follows (omitting irrelevant parts):

“CAC notified the Respondent about the administrative proceeding via available means of communication: email notification.

Please be aware that the CAC was not able to send the written notice to the Respondent as the address provided by the Registrar in Registrar verification: “bao an qu xin an jie dao hai le she qu 43 qu xing hua yi lu 89 hao jin bao ke chuang zhong xin 717” does not exist. The postal service provider was not able to deliver a written notice to such address. No other address for correspondence was found on the disputed domain name.

As far as the e-mail notice was sent to <danniellemonsrudpoy69@gmail.com>, <postmaster@neweramx.com> but we never received any proof of delivery or notification of non-delivery.

No further e-mail address could be found on the disputed site.

The Respondent never accessed the online platform.”

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 “NEW ERA” as well as domain names incorporating its trademark, namely <neweracap.com> and <newera.mx>, which are used in connection with its goods and services.

The Respondent registered the disputed domain name on June 26, 2025, well after the Complainant established its rights in the “NEW ERA” trademark and domain names.

The Complainant challenges the registration of the disputed domain name under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, seeking transfer of the disputed domain name.

The Respondent failed to file any administrative compliant response.

For the reasons articulated in the Panel’s findings above, the Panel is satisfied that:

• The disputed domain name is confusingly similar to the Complainant’s trademark “NEW ERA”.
• The Respondent has no rights or legitimate interests in respect of the disputed domain name.
• The disputed domain name has been registered and is being used in bad faith.