The Complainant is Peak Performance Production AB of Sweden, represented by Gabrielle K. Brauner, Sweden.
The Respondent is Yan Zuihong of Quanzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2014. On March 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 31, 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. On April 14, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On April 16, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. On April 15, 2014, the Center notified the Parties that according to the information provided by the Registrar, the Disputed Domain Name was set to expire on April 28, 2014. The Disputed Domain Name was renewed by the Complainant on April 30, 2014 and remains active for the administrative procedure to continue.
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 April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2014.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on May 21, 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.
The Panel has reviewed the Case File and has noticed an inconsistency of the name of the Complainant in the Complaint and in the scanned copy of the trademark certificates provided by the Complainant. On June 2, 2014, the Panel therefore ordered that the Complainant file an amended/amendment to the Complaint to verify whether there was a typographical error in the name of the Complainant in the original Complaint. On June 3, 2014 the Complainant submitted an amendment to the Complaint with the correct name of the Complainant, which is Peak Performance Production AB. On June 10, 2014 the Center notified the Panel that the Respondent did not comment on the Complainant's amendment to the Complaint by the specified due date. 4. Factual Background
The Complainant is a Sweden corporation which sells outdoor gear and casual wear. The Complainant is the owner of the following registered trademarks:
1. " " (P logo), International trademark, Registration No. 989616, registered on December 3, 2008.
2. PEAK PERFORMANCE, Sweden trademark, Registration No. 264312, registered on February 10, 1995.
According to the WhoIs data, the Respondent is Yan Zuihong. The Disputed Domain Name was registered on April 28, 2013. 5. Parties' Contentions A. Complainant
The Complainant's contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name incorporates the Complainant's PEAK PERFORMANCE trademark in its entirety with an additional element "norway", which is a generic word and is not able to create a sufficient distinction between the Disputed Domain Name and the Complainant's trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent is not entitled to any trademarks, logotypes or domain names in the name "PEAK PERFORMANCE". The Respondent is not licensed or authorized by the Complainant to use the Complainant's PEAK PERFORMANCE trademark in any form. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent uses the Disputed Domain Name for the commercial purpose of selling counterfeit goods labeled with the Complainant's trademark.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant's PEAK PERFORMANCE trademark. The Respondent intentionally uses the Disputed Domain Name to mislead consumers for commercial gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Preliminary Procedural Issues A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding".
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states: "in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requests the language of proceeding to be English. The Respondent did not reply to the request of the Complainant. The Registration Agreement for the Disputed Domain Name is in Chinese. Given to the following factors, the Panel decides that the language of proceeding be English.
1. The web site the Disputed Domain Name resolves to contains both Norwegian and English;
2. Most of the names of products are in English, such as "Peak Performance Jackets Mens" or "Peak Performance Kids Jackets in pink" under individual products pictures, and the Respondent has posted different advertising language in English;
3. Given that the content of the web site to which the Disputed Domain Name resolves contains extensive use of English, it appears that the Respondent understands and is able to communicate in English. The Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese;
4. The Center's communication to the Respondent used both English and Chinese and gave the Respondent an opportunity to object to the Complainant's request. The Respondent did not reply to the Center.
Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that (i) [the disputed domain dame] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"
The Complainant has established that it is the owner of the PEAK PERFORMANCE trademark.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
The Disputed Domain Name incorporates the PEAK PERFORMANCE trademark in its entirety. The other element incorporated to the Disputed Domain Name is only the country name "norway". The PEAK PERFORMANCE element is still immediately recognizable as the Complainant's trademark. In the Panel's view, the addition of a generic term does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant's PEAK PERFORMANCE trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the top-level suffix ".net" in the Disputed Domain Name, it does not distinguish the Disputed Domain Name from the Complainant's PEAK PERFORMANCE trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]"
Paragraph 4(c) of the Policy sets out the following several circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such primafacie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: "[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. […]." (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the PEAK PERFORMANCE trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the PEAK PERFORMANCE trademark to register the Disputed Domain Name or any other variations.
According to the record in the WhoIs database, the name of the Respondent is Yan Zuihong, which has no apparent connection to the PEAK PERFORMANCE trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of "Peak Performance". The Complainant also provides screenshots from the web site to which the Disputed Domain Name resolves, which show that the Respondent purportedly offers PEAK PERFORMANCE outdoor gear and casual wear for sale. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any response to the Complaint. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.
Meanwhile, the web site to which the Disputed Domain Name resolves sells outdoor gear and casual wear with the PEAK PERFORMANCE trademark, and does not accurately and prominently disclose the Respondent's relationship with the Complainant. The Panel need not decide whether the goods sold on the web sites are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Name when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent's] domain name has been registered and is being used in bad faith."
Paragraph 4(b) of the Policy explicitly states, in relevant part, that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location".
The Complainant's PEAK PERFORMANCE trademark has been registered in many countries around the world prior to the registration of the Disputed Domain Name. The Respondent chose the PEAK PERFORMANCE trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the web site to which the Disputed Domain Name resolves that were annexed to the Complaint, the Respondent uses the PEAK PERFORMANCE trademark to sell allegedly (counterfeit) outdoor gear and casual wear. It thus appears that the Respondent registered the Disputed Domain Name with knowledge of the Complainant's PEAK PERFORMANCE trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the PEAK PERFORMANCE string with a generic term for any reason other than the reputation of the Complainant's trademark. The Panel finds that the Disputed Domain Name has been registered in bad faith.
The Respondent uses the PEAK PERFORMANCE trademark on the front page of the web site to which the Disputed Domain Name resolves. The web site sells outdoor gear and casual wear under the PEAK PERFORMANCE trademark. There is no indication that accurately and prominently discloses the Respondent's relationship with the Complainant. On the front page of the disputed web site, the Respondent also uses a store picture of the Complainant's retail store, which contains a shop sign with the Complainant's PEAK PERFORMANCE trademark. At the bottom of the disputed web site, the Respondent has posted a statement: "Copyright@2014 www.. Powered by Peak performance norway". The Respondent has intentionally designed the web site under the Disputed Domain Name to create an impression with Internet users that it is an official web site of the Complainant, or is endorsed or sponsored by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion. This use of the Disputed Domain Name is clearly in bad faith.
The Panel also notes that the Respondent provided incorrect contact details to the Registrar when registering the Disputed Domain Name, as is shown by the fact that the delivery of the Notification of Complaint to the Respondent by courier was not possible due to the incorrect Respondent's address and phone number. The Panel finds that this constitutes further evidence of bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelis
Date: June 11, 2014
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