Decision for dispute CAC-UDRP-108080

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:
- EU trademark registration SOFUCOR No 018468913, registered on September 30, 2021;
- U.S. trademark registration SOFUCOR No 6128096, registered on August 18, 2020.

The disputed domain name <sofucor.com> was registered on 17.08.2022.

The Complainant is a manufacturer specializing in the production of luxury decorative ceiling fan lights and fan lights. Its own brand SOFUCOR focuses on the production and sales of smart ceiling fan lights, decorative ceiling fans and lighting parts and accessories.

The Complainant asserts prior rights in the “SOFUCOR” trademark, which was registered in various regions including the United States, the European Union, and China well before the registration of the disputed domain name. The Complainant’s trademark “SOFUCOR” is used extensively in connection with luxury decorative ceiling fan lights and fan lights, and has achieved significant market presence, particularly in North America, as proved by the Amazon shipping summaries, Amazon after-sales service email records, Walmart item sales summaries and the number of views of the Complainant’s videos on the Complainant’s YouTube account. 

The Complainant contends that the disputed domain name is identical to its registered trademark, with the only difference being the capitalization of letters. The Complainant submits that, in accordance with established UDRP principles, the relevant comparison should focus on the second-level portion of the domain name, disregarding the generic top-level domain “.com,” which does not serve to distinguish the domain name from the Complainant’s prior rights. The entirety of the Complainant’s trademark is incorporated into the disputed domain name, with no additional elements to dispel confusion. The Complainant argues that this creates a likelihood of confusion among Internet users, who may mistakenly believe that the disputed domain name is associated with the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is used to redirect users to adult or other commercial websites, generating revenue through advertising and sales of unrelated products. Such use does not constitute a bona fide offering of goods or services, nor does it amount to legitimate noncommercial or fair use under paragraph 4(c) of the Policy.

The Complainant’s investigations revealed that the Respondent holds no registered or pending trademark rights in the name “SOFUCOR,” and is neither a distributor, agent, nor business partner of the Complainant. The Complainant has never authorized or licensed the Respondent to use the SOFUCOR trademark or any domain name incorporating it. Furthermore, the Respondent’s identity does not correspond to the name “SOFUCOR,” precluding any claim to being commonly known by the disputed domain name. Accordingly, the Complainant contends that the Respondent lacks any rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy.

The Complainant argues that the disputed domain name was registered and is being used in bad faith. Given the Complainant’s extensive use and promotion of the SOFUCOR trademark across various online platforms, the Complainant submits that the Respondent was, or should have been, aware of the Complainant’s rights at the time of registration. The Complainant further notes that the SOFUCOR trademark is distinctive and not a common word, making it implausible that the Respondent selected the disputed domain name by accident.

The Respondent’s use of the disputed domain name to redirect users to adult or other commercial websites, thereby capitalizing on the Complainant’s reputation and goodwill, constitutes evidence of bad faith registration and use. The Complainant contends that such conduct satisfies the criteria for bad faith under paragraph 4(b)(iv) of the Policy. The combination of the trademark’s distinctiveness and the Respondent’s commercial exploitation supports the conclusion that the disputed domain name was registered and is being used in bad faith, consistent with paragraphs 4(a)(iii) and 4(b) of the UDRP.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

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 Complainant has, to the satisfaction of the Panel, shown 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 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.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.

I. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant has established the fact that it has valid rights for the US and EU trademark’s registrations SOFUCOR registered in 2020 and 2021. The disputed domain name wholly incorporates the Complainant’s trademark. The addition of the generic top-level domain “.COM” does not change the overall impression of the designation as being connected to Complainant’s trademark and should be, therefore, disregarded.

The Panel therefore considers the disputed domain name to be identical to the Complainant’s trademark which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

II. The respondent has no rights or legitimate interests in respect of the domain name

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that (ii) the respondent has no rights or legitimate interests in respect of the domain name.

The Complainant has established a prima facie case (not challenged by the Respondent who did not file any response to the complaint) that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not related in any way with the Complainant, is not a distributor, agent, or business partner of the Complainant, and the Complainant has never authorized or licensed the Respondent to use the SOFUCOR trademark or any domain name incorporating it. Furthermore, there is no indication that the Respondent is commonly known by the term “SOFUCOR”. As the disputed domain name is used to redirect visitors to other commercial websites, including adult content websites, such use is not considered to be good faith use in connection with a bona fide offering of goods or services. There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Given the Respondent's failure to respond and the absence of any apparent legitimate use of the disputed domain name, the Panel considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

III. The domain name has been registered and is being used in bad faith

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that (iii) the domain name has been registered and is being used in bad faith.

The Respondent has registered the disputed domain name which consists of the full Complainant’s trademark “SOFUCOR”. 

The Complainant presented evidence that shows, that the trademark SOFUCOR is extensively used commercially and is promoted across online platforms, including e-commerce marketplaces, social media, and other digital channels. It is reasonable to infer that the Respondent was aware or should have been aware of the existence and reputation of the Complainant’s trademark at the time of registering the disputed domain name.

The disputed domain name is further used to redirect the visitors to other commercial websites including the adult content websites. Such use could, therefore, attract the internet users to the corresponding web page by creating a likelihood of confusion with the Complainant’s trademarks (paragraph 4(b)(iv) of the Policy). 

The Panel therefore considers 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 Panel finally considers that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. The Complainant has thus established all three elements of paragraph 4(a) of the Policy.