The Complainants are Ape & Partners S.p.A. of Segusino, Italy, and PJS International S.A. of Luxembourg, Luxembourg, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Fritz Hansen of Harstad, Norway. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2014. On February 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14 and 18, 2014, 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.
According to information the Center received from the concerned registrar, the language of the registration agreement for the disputed domain name is Norwegian. In this connection, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Norwegian; or 3) submit a request for English to be the language of the administrative proceedings. The Respondent was invited to provide comments in light of the Complainant's submission. On March 7, 2014, the Complainant submitted a request for English to be the language of the administrative proceedings. The Respondent did not submit any comment on the Complainant's submission.
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 in both English and Norwegian language, and the proceedings commenced on March 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 24, 2014.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 7, 2014. 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 are Ape & Partners S.p.A. and PJS International S.A. (the "Complainants"). PJS International S.A. is the owner of the following trademarks:
- PARAJUMPERS, Community trademark, reg. No. 4905493, filed on February 13, 2006 and granted on February 13, 2007, in classes 9, 18 and 25.
- P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS, Community trademark, reg. No. 4905451, filed on February 13, 2006 and granted on February 13, 2007, in classes 9, 18 and 25.
- PARAJUMPERS, U.S. trademark, reg. No. 3486435, filed on June 5, 2006 and granted on August 12, 2008, in classes 9, 18 and 25.
- PARAJUMPERS, Russian trademark, reg. No. 365020, filed on September 24, 2007 and granted on November 17, 2008, in class 25.
- PARAJUMPERS, Chinese trademark, reg. No. 6294841, filed on September 25, 2007 and granted on April 7, 2010, in class 25.
Ape & Partners S.p.A. is the exclusive licensee of the registered trademarks owned by PJS International S.A., including PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS.
The disputed domain name was registered on February 15, 2010. 5. Parties' Contentions A. Complainant
The trademarks PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS are used to denote winter coats and jackets for men, women and children. These trademarks have over the years become well known in the field of winter garment, especially for coats and jackets, due to the unquestionable high quality of such products. This success, in particular, is due to Ape & Partners S.p.A.'s ability to produce innovative products made by high-quality materials, suitable for the protection of the human body from freezing temperatures. Nowadays, the trademarks PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS are the most popular ones in the market of winter garments, both in Italy and abroad, and are also well known for the high level of manufacturing with innovative and original design. Products bearing the marks of PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS are currently commercialized in North America, Europe and Asia, with showrooms in New York, Toronto, Helsinki, London, Seoul, Tokyo and many other big cities around the world. The trademarks PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS are present in many of the most important international fashion events, such as "Premium Fashion Trade Show" in Berlin and "Pitti Uomo N.83"in Florence. Several celebrities and VIPs from the international show business are often photographed wearing the PARAJUMPERS jackets, such as the Hollywood star Jennifer Garner, the DJ David Guetta, the actress and fashion model Denise Richards, the TV actors John Hamm and Mario Lopez. Identical or Confusingly Similar
Prior to the date of registration of the disputed domain name, Ape & Partners S.p.A. registered the term "Parajumpers" as a domain name in several country code Top-Llevel Domains (ccTLDs), such as and . In addition, Ape & Partners S.p.A. is also the owner of the following domain names: , , , , , , , , , , , , and .
The disputed domain name reproduces, in its entirety, the trademark PARAJUMPERS in which the Complainants have prior rights and it is also identical to the domain names above registered by Ape & Partners S.p.A. There is no difference between the trademark PARAJUMPERS and the disputed domain name, except for the generic Top-Level Domain (gTLD) ".net". Such suffix may be ignored for the purpose of comparison and is not sufficient to prevent the disputed domain name from being confusingly similar to the trademark PARAJUMPERS and to the related domain names registered by Ape & Partners S.p.A. It is undoubtedly that the disputed domain name is almost identical to the trademark P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS, since it shares the latter main verbal portion "parajumpers".
It has to be noted that several UDRP panelists, in numerous cases, have concluded that incorporating a trademark in full may be sufficient to meet paragraph 4(a)(i) of the Policy. Furthermore, several UDRP decisions have pointed out that the presence, in the disputed domain name, of suffixes referred to gTLDs or ccTLDs are irrelevant in order to elude the identity or the confusingly similarity between the disputed domain name and the mark in which the Complainant has rights.
With particular reference to the Complainants' trademarks, it shall be emphasized that regarding in Ape & Partners S. p. A. and PJS International S.A. v Davis Lin,WIPO Case No. D2013-1756, the panelist stated that "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".
In the light of the above, it is clear that the disputed domain name is identical to the trademark PARAJUMPERS and confusingly similar to the trademark P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS, in which the Complainants have rights. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
It shall be emphasized that the Respondent is a former retailer of the Complainants. Until 2012 Fall/Winter season, the Complainants' official supplier in Norway regularly provided the Respondent's company with authentic PARAJUMPERS apparels. Despite the fact that the parties' business relationship came to an end two years ago, the Respondent is currently selling its remaining stocks of PARAJUMPERS items – together with other winter coats and jackets for men, women and children from other brands – through its website "", connected to the disputed domain name.
Therefore, the Respondent is currently not authorized by any one of the Complainants to use the trademarks PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS or to use the disputed domain name, since the Complainants have no relationship with the Respondent at this day.
For sake of completeness, it has to be noted that the Respondent would not have enough legitimate interest in the Complainants' trademarks even in the case of a prior pending business relationship between the parties. In fact, the disputed domain name does not correspond to the business of the Respondent and "Fritz Hansen" is not commonly known as PARAJUMPERS. In addition, the Complainants do not find a fair or noncommercial use of the disputed domain name.
The extent to which a licensee/retailer/supplier/purveyor of legitimate goods can, without authorization, use the manufacturer's or licensor's name as part of a domain name has been subject of several discussions in WIPO cases. It shall be kept in mind that the Respondent is a former retailer, who ceased its business relationship with the Complainants more than two years ago. There is a distinct majority of panels' views that perfectly corresponds to the factual and legal backgrounds of the present issue. The majority view rejects any claim by a licensee to the right to register a domain name consisting of, or containing, the licensor's trademark. The above considerations in the cases are even more relevant whenever a domain name suggests a broader relationship compared to this case.
As a matter of fact, Internet users are inevitably led to believe that the disputed domain name is the official website for the Complainants' products, since the disputed domain name perfectly incorporates the trademark PARAJUMPERS, without any further descriptive or geographical term which may convince the public that the same is not directly connected to the Complainants' official chain.
Another relevant aspect to consider is that the Respondent is using the disputed domain name also for selling products from the Complainants' direct competitors. A considerable amount of WIPO and NAF decisions underline how there cannot be legitimate interest in the use of a mark in a domain name that "sells competitive products of other manufacturers" (Mariah Boats, Inc v Shoreline Marina LLC, NAF Case No. 943 92). Registered and Used in Bad Faith
As proved in the previous paragraphs, the trademarks PARAJUMPERS and P.J.S. THAT OTHER MAY LIVE PARAJUMPERS unquestionably are well-known marks. The Respondent was clearly aware thereof, also due to its commercial relation with the Complainants. Since it has been already demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name, there cannot be any other purpose other than deliberately preventing the Complainants from reflecting their well-known trademark PARAJUMPERS in a corresponding ".net" domain name.
First of all, the Respondent registered four domain names that in their entirety reproduce the Complainants' trademarks, such as , , and . In fact, as it can be easily noted in the correspondence exchanged between the Complainants and the Respondent in the past years, that the Complainants accidentally detected that the Respondent registered all these domain names stated above in order to use the same for its website. Although such conduct is quite unusual and inappropriate under a professional point of view, the Complainants tried to amicably solve the situation by informing the Respondent they could not accept that a retailer was free to register domain names identical to the trademark PARAJUMPERS. Nevertheless, the Respondent did not listen and the Complainants were forced to purchase the following domain names , and for the amount of EUR 1000. After that, the relationship between the parties clearly lapsed and the Complainants informed the Respondent that their business partnership was over. Such circumstance inevitably give rise to the inference that the Respondent has registered the domain names stated above in order to prevent the Complainants from reflecting their marks in the corresponding domain names.
Furthermore, the use of the disputed domain name for a website that commercializes Complainants' products and those of their competitors constitutes an improper use of Complainants' mark to attract Internet users to the Respondent's site for commercial gain, by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site. In addition to what has been stated above, the Respondent has no current business relation with the Complainants. It must be emphasized that several WIPO decisions have stated that the registration and use of a domain name to re-direct Internet users to websites containing offers of competing organizations constitute bad faith registration and use under the Policy.
Lastly, the fact that the Respondent accepted to transfer the following domain names , and to the Complainants only in return for EUR 1000 constitutes an offer to sell the domain names in return for valuable consideration, as such price is far in excess of the out-of-pocket costs required for registering the above three domain names. Indeed, such an eager and unreasonably high request – totally incomprehensible given the business relationship between the parties at the time of negotiation for the transfer – is the definitive demonstration of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Preliminary Issue: Language of proceedings
The Complaint was filed in English. The Registrar has confirmed Norwegian as the language of the registration agreement for the disputed domain name . The Complainants submitted a request for English to be the language of the proceedings and the Respondent did not object to the Complainants' request. In their request, the Complainants allege that they get in touch with the Respondent well before the beginning of the administrative proceedings, as the Respondent is a former retailer of the Complainants and they always used English language for their business. The Complainants submitted evidence of previous communications with the Respondent in English. The Panel is of the opinion that the translation of the Complaint and annexes into Norwegian would unduly delay the administrative proceeding, and the Complainants would have to incur substantial expenses for translation. In light of the facts of this case, and in the interest of fairness to both parties, pursuant to paragraph 11(a) of the Rules, the Panel finds that the language of the requirement has been satisfied through the use of Norwegian in the Notification of Complaint and Commencement of Administrative proceedings, and absent a Response, determines that the Decision will be rendered in English. B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. C. Identical or Confusingly Similar
The Complainants' are the holders of exclusive rights in the four registered trademarks involving PARAJUMPERS and one involving P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS. The Panel notes that the Complainants' trademarks have not been registered in Norway, the Respondent's country. However, the Panel also notes that the Policy does not require the trademarks of the Complainants be protected in the Respondent's country. Therefore, the aforementioned trademarks are sufficient to initiate an action under the Policy against the Respondent. See for instance I Inc. v. Infospace Technology Co. Ltd, WIPO Case No. D2000-0074, and Parfums Christian Dior S.A. v. Jadore,WIPO Case No. D2000-0938.
The disputed domain name consists of the word "parajumpers" with the addition of the gTLD ".net". According to well established consensus among UDRP panels, the gTLD is generally not distinguishing. It has also earlier been stated in Ape & Partners S. p. A. and PJS International S.A. v. Davis Lin,WIPO Case No. D2013-1756, that another domain name , was reproducing the trademark PARAJUMPERS in its entirety and incorporated the key element, "parajumpers", of the trademark P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS.
In accordance with the decision in Ape & Partners S. p. A. and PJS International S.A. v. Davis Lin, supra, the Panel finds the disputed domain name to be identical to the trademark PARAJUMPERS and incorporating the key element of P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS in which the Complainants' have rights.
The first element of the paragraph 4(a) of the Policy is thus fulfilled. D. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainants are still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainants have asserted that no permission has been granted to the Respondent to register the disputed domain name. Moreover, the Complainants have stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name, which entirely incorporates the Complainants' trademark PARAJUMPERS and incorporates the key element of P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS. Even though the Respondent earlier has acted as the Complainants' retailer, it does not confer it the right to use the Complainants' trademarks as a domain name.
Having considered the submissions of the Complainants, and the absence of a formal Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainants or authorized to use any of the Complainants' PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS trademarks in the disputed domain name. Nor does the Panel find any indications that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, or has rights or legitimate interests in any other way in the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled. E. Registered and Used in Bad Faith
The disputed domain name was registered some years after the registration date of the Complainants' trademarks.
The disputed domain name is identical to the Complainants' trademark PARAJUMPERS. The disputed domain name is used to promote competing commercial services by offering products of the Complainants' competitors. It is also improbable that the Respondent would register four separate domain names, each of which reproduces the Complainants' trademark PARAJUMPERS with no awareness of the Complainants' trademark. Therefore, it is not probable that the Respondent has selected the disputed domain name without knowledge of the Complainants' trademarks rights and business. As been stated above, the Respondent was earlier the Complainants' retailer, but the Complainants' have asserted that the parties' business relationship ceased more than two years ago. The Respondent is therefore a former retailer of the Complainants' and must be fully aware of the Complainants' trademarks.
Having regarded these facts, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Respondent has not rebutted this with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
The third and final element of the Policy is fulfilled. 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 Ape & Partners S.p.A.
Jonas Gulliksson
Sole Panelist
Date: May 21, 2014
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