Sarofims.com

The timeline behind sarofims.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fayez Sarofim & Co., Sarofim Realty Advisors LLC v. 刘辉 (Hui Liu) Case No. D2025-3947 1. The Parties The Complainants are Fayez Sarofim & Co., United States of America (“United States”), and Sarofim Realty Advisors LLC, United States, represented by Holland & Knight, LLP, United States. The Respondent is 刘辉 (Hui Liu), United States. 2. The Domain Name and Registrar The disputed domain name <sarofims.com> is registered with Cloud Yuqu LLC (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2025. On September 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Respondent Information Hidden By Privacy Service) and contact information in the Complaint. The Center sent an email communication to the Complainants on October 1, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint in English on October 6, 2025. On October 1, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On October 6, 2025, the Complainants confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainants’ submission. The Center verified that the Complaint together with the amendment to 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”). page 2 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 October 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2025. The Center appointed Joseph Simone as the sole panelist in this matter on November 5, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainants, Fayez Sarofim & Co. and Sarofim Realty Advisors LLC, have been operating a business specializing in the provision of financial services under their SAROFIM service mark since 1958. The Complainants assert common law rights in the SAROFIM mark arising from their reputation as a reliable investment advisor well-known both to consumers and the public and from their continuous use of the official domain name <sarofim.com> since at least May 19, 1995. The Complainants own the following trade mark registration incorporating the SAROFIM element: - United States Trade Mark Registration No. 5738323 SAROFIM REALTY ADVISORS in Class 36 registered on April 30, 2019 by Sarofim Realty Advisors LLC. The disputed domain name was registered on July 1, 2025. The evidence provided by the Complainants further indicates that, prior to filing of the Complaint, the disputed domain name resolved to a website virtually identical to the Complainants’ website. At the time of issuance of this Decision, the disputed domain name resolves to an error page. 5. Parties’ Contentions A. Complainants The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainants contend that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainants’ SAROFIM mark in which the Complainants have rights and that the addition of the letter “s” does not affect the analysis as to whether the disputed domain name is identical or confusingly similar to the Complainants’ marks. The Complainants assert that they have not authorized the Respondent to use the SAROFIM mark, and there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainants also claim there is no evidence that the Respondent has any connection to the SAROFIM mark, and that there is no plausible reason for the Respondent to have registered the disputed domain name, especially considering the fact that the disputed domain name has been used in connection with hosting a website impersonating the Complainants’ official website. The Complainants therefore argue that the registration and any use of the disputed domain name must be in bad faith. page 3 B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Preliminary Procedural Issues A. Consolidation of Multiple Complainants The Panel notes that the present Complaint has been filed by multiple complainants. UDRP panels have articulated principles governing the question of whether a complaint filed by multiple complainants may be brought against one respondent. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11. In order for the filing of a single complaint brought by multiple complainants to be accepted, the complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. In the present case, the Panel is satisfied that both Complainants have rights in the SAROFIM mark as set out in the Factual Background heading above. The Panel notes the Complainants’ assertion that Fayez Sarofim & Co. is the parent of majority-owned subsidiary Sarofim Realty Advisors LLC, and that they have been collectively affected by the Respondent’s conduct, and that as there is a common grievance on the part of each of them in respect of a single disputed domain name, and given the almost identical facts, it would be procedurally efficient to consolidate the Complainants’ grievances in a single proceeding. The Panel finds that the Complainants have established that they have a common grievance against the Respondent, which would affect their individual rights on substantially the same basis. The Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints, and no potential prejudice is apparent to the Panel. The Respondent has not otherwise contested the request for consolidation. Accordingly, the Panel considers it procedurally efficient to allow the Complainants to proceed with the Complaint as filed and believes that consolidation is fair and equitable to all of the Parties. B. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainants have requested that the language of the proceeding be English for several reasons: - The Respondent has directed the disputed domain name to a website in English; - The Respondent has self-identified as a company with English-speaking capabilities and a business that targets English-speaking consumers; and page 4 - The Complainants have a principal place of business within the United States and thus all the evidence of widespread and longstanding rights in the marks, and any associated business operations (including prior sales and marketing efforts), will be in English. The Respondent did not make any submissions with respect to the language of the proceeding, did not file any response and has taken no part in this proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel must act in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (WIPO Overview 3.0, section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Substantive Issues A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainants rely primarily on common law rights in the SAROFIM trademark. It is well-established that the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered trademarks. WIPO Overview 3.0, section 1.1. To establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its trademark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. WIPO Overview 3.0, section 1.3. The Panel considers that the Complainants have demonstrated such acquired distinctiveness. This is supported by the fact that SAROFIM is the Complainants’ name as well as their founder’s name, and that the Complainants started to promote their business through the official domain name <sarofim.com> since at least May 19, 1995. Accordingly, the Panel finds that the Complainants have established common law rights in the SAROFIM mark for purposes of this Complaint. Disregarding the generic Top-Level Domain “.com”, the Panel finds the Complainants’ SAROFIM mark is clearly recognizable within the disputed domain name. In addition, the Panel notes that the Complainant has registered trade mark rights in SAROFIM REALTY ADVISORS. The dominant part of the SAROFIM REALTY ADVISORS trade mark is also clearly recognizable within the disputed domain name. The inclusion of the letter “s” does not prevent a finding of confusing similarity. WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1. The Panel therefore finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing their rights in the relevant trade marks and in showing that the disputed domain name is confusingly similar to their mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task page 5 of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In this case, the Complainants assert that they have not authorized the Respondent to use their trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Having reviewed the available record, the Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. At the time of filing of the Complaint, the disputed domain name was used to impersonate the Complainants’ website. Such use of the disputed domain name is inherently fraudulent and cannot confer any rights or legitimate interests upon the Respondent. Panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. There is also no evidence to show that the Respondent has been commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainants’ prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case. Accordingly, and based on the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third and final element that a complainant must prove is that the respondent has registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered as evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark 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 domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location. page 6 The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. Other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. For reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name. As indicated above, the Complainants’ unregistered SAROFIM trademark, as well as the SAROFIM REALTY ADVISORS trademark registration, predate the registration of the disputed domain name. The Panel finds that the Respondent was or should have been aware of the Complainants’ trademarks at the time he registered the disputed domain name. This finding is supported by the composition of the disputed domain name, which consists solely of the Complainant’s unregistered SAROFIM trade mark, as well as by the Respondent’s use of the disputed domain name to impersonate the Complainants’ website. All in all, the SAROFIM marks were already widely known and directly associated with the Complainants’ activities. A simple online search for the term “sarofim” would have revealed that it is an established brand. WIPO Overview 3.0, section 3.2.2. Next, the disputed domain name has been used by the Respondent in bad faith. As stated above, the Complainants’ evidence shows that the disputed domain name previously resolved to a website that appeared virtually identical to the Complainants’ website, thereby potentially enabling the Respondent to mislead or deceive the public. This presents an implied ongoing threat to the Complainants and further supports a finding of bad faith. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sarofims.com> be transferred to the Complainants. /Joseph Simone/ Joseph Simone Sole Panelist Date: November 19, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.