The Complainant is Ape & Partners S.p.A. of Segusino, Italy and PJS International S.A. of Luxembourg, Luxembourg, represented by Perani Pozzi Associati - Studio Legale, United States of America (“US”).
The Respondent is Davis Lin of Putian, Fujian, China [but stated as resident in the US in the WhoIs records]. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.
The Center appointed Derek M. Minus as the sole panelist in this matter on November 21, 2013. 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 Complainant is the registered owner and exclusive licensee of the trademarks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS. These trademarks are registered worldwide, at national and international level in the name of PJS International S.A. and Ape & Partners S.p.A. is the exclusive licensee of the registered trademarks owned by PJS International S.A. The Complainant provided evidence of its trademark registrations and licensee arrangements, including:
Chinese trademark
PARAJUMPERS
registration no. 6294841
filed September 25, 2007
granted April 7, 2010
in class 25
U.S. trademark
PARAJUMPERS
registration no. 3486435
filed June 5, 2006
granted August 12, 2008
classes 9, 18, 25
U.S. trademark
PARAJUMPERS
registration no. 3343262
filed March 9, 2007
granted November 27, 2007
in class 25
Community trademark
PARAJUMPERS
registration No. 4905493
filed February 13, 2006
granted February 13, 2007
classes 9, 18, 25
Chinese trademark
PJS THAT OTHERS MAY LIVE PARAJUMPERS
registration no. 6294842
filed September 25, 2007
granted October 7, 2011
class 25
U.S. trademark
THAT OTHERS MAY LIVE PARAJUMPERS PJS
registration no. 3497224
filed June 5, 2006
granted September 2, 2008
classes 9, 18, 25
U.S. trademark
THAT OTHERS MAY LIVE PARAJUMPERS PJS
registration no. 3343260
filed March 9, 2007
granted November 27, 2007
class 25
Community trademark
P.J.S THAT OTHERS MAY LIVE PARAJUMPERS
registration no. 4905451
filed February 13, 2006
granted February 13, 2007
classes 9, 18, 25
The trademarks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS have become well known in the field of winter garments, especially for coats and jackets, because of the high level of manufacturing, using innovative and original design with high-quality materials, suitable to protect the human body against freezing temperatures.
Products bearing the marks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS are currently sold in North America, Europe and Asia, with showrooms in New York, Toronto, Helsinki, London, Seoul, Tokyo and many other popular cities in the world and are presented at important international fashion events, such as the “Premium Fashion Trade Show” in Berlin, and “Pitti Uomo N. 83” in Florence. 5. Parties’ Contentions A. Complainant
The Complainant has registered its mark PARAJUMPERS as a domain name in several country-code Top-Level Domains (“ccTLDs”), such as (registered on November 10, 2005), (registered on February 17, 2009) and (registered on December 1, 2008).
The disputed domain name registered by the Respondent on November 17, 2010, exactly reproduces, in its entirely, the trademarks in which the Complainant has prior rights and it is also identical to domain names registered by the Complainant. There is no difference between the trademark PARAJUMPERS and the disputed domain name, except for the generic Top-Level Domain (“gTLD”) “.org”, which may be ignored for the purpose of comparison.
The Respondent is not known by the disputed domain name nor affiliated with the Complainant in any way. The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, Davis Lin and Xmyilong Company are not commonly known as PARAJUMPERS. The Respondent’s use of the PARAJUMPERS trademark in its entirety demonstrates that the Respondent was aware of the existence and renown of the trademarks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS and deliberately set out to use the Complainant’s trademarks which were already used and known all around the world, even in China by 2010.
Furthermore, before the date of the disputed domain name’s registration several magazines online have published press articles related to the trademarks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS. Therefore, it is unquestionable that the Respondent had knowledge of the Complainant’s trademarks.
Internet users that are looking for the Complainant’s own website are instead, fraudulently directed to visit the website connected to the disputed domain name, due to the confusion created by the Respondent between the trademarks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS and the disputed domain name. Customers are led to believe that the website linked to the disputed domain name at issue is somehow affiliated to the Complainant, or, even worse, that it is owned by the Complainant, which is untrue.
Lastly, the disputed domain name redirects to a parking page containing sponsored links. Therefore, the Respondent is not making any fair or noncommercial use of the disputed domain name and the domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Respondent was given notice of this proceeding in accordance with the Rules but failed to file a Response to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any way. The Respondent’s failure does not automatically result in a decision in favour of the Complainant. To succeed, the Complainant must still demonstrate that all of the elements identified in paragraph 4(a) of the Policy, have been satisfied.
However, as the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the Respondent’s failure to submit a Response as the Panel considers appropriate (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS trademarks (the “PARAJUMPERS trademarks”) as it reproduces one of the Complainant’s trademarks in its entirety and incorporates the key element, PARAJUMPERS, of the other.
It has been consistently held in numerous UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The addition of “.org” at the end of the disputed domain name offers no substantive, meaningful or material change to the disputed domain name to differentiate it from the trademarks owned by the Complainant.
Therefore, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered PARAJUMPERS trademarks. B. Rights or Legitimate Interests
The second element that a complainant under the Policy must show is that, on the balance of probability, the respondent has no rights or legitimate interests in the disputed domain name. If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus then reverts to the respondent to displace that presumption.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Complainant owns the exclusive rights in its PARAJUMPERS trademarks and has never licensed, authorised nor permitted the Respondent to register or use its trademarks or the disputed domain name . According to the Complainant, the Respondent is not affiliated with the Complainant, and it has no relationship with the Respondent in any way and the Respondent has never been known by the disputed domain name. According to the submission of the Complainant, the Respondent had knowledge of the fame and the earlier registration of the Complainant’s trademarks and associated products when registering the disputed domain name on November 17, 2010.
The Respondent is not making any legitimate noncommercial or fair use of the PARAJUMPERS trademarks.
On the contrary, the disputed domain name resolves to a parking page that is commercial in nature and provides advertising links to third party products and services. This website has no content other than links to other websites that advertise products which are similar to the Complainant’s. By clicking on these links, Internet users are automatically redirected to other online stores and garment-related websites offering products that compete with those of the Complainant. The Respondent earns a payment every time someone clicks on one of the hyperlinks on the website linked to the disputed domain name.
This, in the Panel’s view, does not constitute a bona fide offering of goods within the meaning of paragraph 4(c) of the Policy. Under paragraph 4(c)(i) of the Policy “it is the use of the domain name that must be bona fide, not the offering of goods or services”, see Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow,WIPO Case No. DAU2004-0003.
The Respondent, by failing to provide a response, cannot identify any circumstances which may suggest that it has any rights or legitimate interests in the use of the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish both that the Respondent has registered and is using the disputed domain name in bad faith. The consensus view among UDRP panels is that these requirements are conjunctive. Thus, a complainant must prove both bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii) (see e.g. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011). The Complainant bears the onus of proof in these matters.
As noted in the WhoIs of the disputed domain name, the Respondent provided the Registrar with false contact details when he registered the domain name. The Respondent indicated “US” as his country of residence, while the city and state/province were recorded as, Putian and Fujian, a city and province located in China. Even with this correction, the Center’s courier company was unable to contact the Respondent and advised that: “The delivery address and phone number are wrong”.
It appears that the Respondent’s purpose, in supplying false address and contact details, was to hide his true business address when registering the disputed domain name. Several UDRP decisions establish that supplying false information for the domain name registration, in order to hide the registrant’s identity, can itself be considered evidence of bad faith. See France-Manche v. Cimagotipo S.L.,WIPO Case No. D2001-0771 (“attempt to hide the domain holder’s true identity by using a liquidated company and a post address which is not valid”) and Weetabix Limited v. Mr. J Clarke,WIPO Case No. D2001-0775 (“The Respondent registered the disputed domain name with false contact details which prevented the Complainant from verifying the receipt of its communications with him. This alone, in the opinion of this panel, is sufficient to establish registration in bad faith”).
Further, the Respondent’s use of a “pay-per-click” website supports a finding of bad faith in both the use and registration of the disputed domain name. The Respondent has used the disputed domain name to direct Internet users to competitive stores selling nearly identical jackets with fur hood lining, ripcord elements and skydiving hook closures similar to those designed for the Complainant’s products. This indicates that the Respondent has intentionally attempted to attract Internet users to the website connected to the disputed domain name to trade on the Complainant’s trademarks.
It is fundamental that the use of a disputed domain name by a respondent for a pay-per-click website with sponsored links that lead to the websites of competing manufacturers, is a clear breach of the Policy. The Respondent is seeking to profit from the use of the disputed domain name by attracting Internet users to other websites to create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the products offered for sale, in order to generate revenue for its own commercial gain. Bad faith has been found by previous UDRP panels where a respondent chooses a domain name similar or identical to the complainant’s trademark to divert Internet users to competitor websites. See YAHOO! INC. v. David Murray,WIPO Case No. D2000-1013, Volkswagen AG v. Fundacion Private Whois, Domain Administrator,WIPO Case No. D2013-0690 and Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC v. Fundacion Private Whois /PPA Media Services,WIPO Case No. D2013-0634.
UDRP panels have also identified the requirement of bad faith in the use of a domain name as a parking page. See, for example, Bank of America Corporation v. Yan Wei,WIPO Case No. D2010-2079 (“the domain parking service is associated with achieving commercial gains for domain name registrants through click-based commissions ... in the circumstances, it is inconceivable that the use of the disputed domain name is other that highlighted in paragraph 4(b)(iv) of the Policy”).
The Panel therefore finds that the requirements of both bad faith registration and use of the disputed domain name in bad faith are made out and that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 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 be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Date: December 5, 2013
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