The Complainant is Peak Performance Production AB of Norrgatan, Varberg, Sweden, internally represented.
The Respondent is Xiao Xun of Zhongshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2015. On March 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2015, 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 April 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on May 1, 2015. 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 owner, amongst others, of the following trademark registrations for PEAK PERFORMANCE (word mark):
- Swedish trademark No. 264312, registered on February 10, 1995, for goods in classes 18 and 25;
- United States trademark No. 3131618, registered on August 22, 2006, for goods in classes 18 and 25.
The Complainant is also the owner of the Chinese trademark No. 7620003 for PEAKPERFORMANCE (word mark), registered on November 14, 2010 for goods in class 25, and of a figurative trademark constituted of a stylized letter “P”, which is protected by the International trademark registration No. 989616, registered on December 3, 2008, for goods in classes 3, 9, 18 and 25.
The disputed domain name was registered on May 30, 2014 and is pointed to a web site in Danish language where the Complainant’s figurative mark is published and purported PEAK PERFORMANCE products are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that its trademark PEAK PERFORMANCE is famous worldwide for high quality premium outdoor gear.
The Complainant asserts that that the Respondent has no rights to use the trademark PEAK PERFORMANCE and contends that the Respondent is using its trademark PEAK PERFORMANCE to promote the sale of counterfeited products.
With reference to the bad faith requirement, the Complainant asserts that the Respondent is intentionally using the disputed domain name to attract user to its web site for personal gain, by causing a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
The Complainant is the owner of trademark registrations for PEAK PERFORMANCE and PEAKPERFORMANCE in different countries of the world, including in China, where the Respondent is based.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name 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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the case at hand, the Panel finds that the addition of the generic term “jakker” (meaning “jackets” in Danish) is not sufficient to prevent the finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.
See also, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink”, and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl”, and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Indeed, the Panel finds that the inclusion of the term “jakker” is particularly apt to mislead Internet users into believing that the web site published at the disputed domain name is operated by, or with the authorization of, the Complainant to sell PEAK PERFORMANCE jackets. See, amongst others, Swarovski Aktiengesellschaft v. Yuenan,WIPO Case No. D2012-1477.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation between the Respondent and the Complainant; the Respondent is not a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent, whose name is Xiao Xun, might be commonly known by the disputed domain name or have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.
The Panel finds that the Respondent cannot establish rights to, or legitimate interests in the disputed domain name since, in light of the contents published on the corresponding web site, users might be mislead into believing that the web site is associated with or approved by the Complainant. Furthermore, the Panel notes that prima facie counterfeit PEAK PERFORMANCE products are offered for sale on the web site to which the disputed domain name resolves and, as mentioned in previous UDRP decisions, there can be no legitimate interest in the sale of counterfeit goods.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel finds that, in light of the Complainant’s prior registrations of the trademarks PEAK PERFORMANCE and PEAKPERFORMANCE also in China, where the Respondent is based, and of the redirection of the disputed domain name, confusingly similar with said trademarks, to a web site where purported PEAK PERFORMANCE products are advertised and offered for sale and the Complainant’s logo is published, the Respondent was very likely aware of the Complainant’s trademark.
The Panel also finds that the Respondent’s use of the disputed domain name to divert users to a web site featuring the Complainant’s figurative trademarks in order to sell prima facie counterfeit PEAK PERFORMANCE products constitutes bad faith use, as Internet users could erroneously believe that the web site published at the disputed domain name is operated by the Complainant or one of its authorized agents and that the products offered for sale are genuine PEAK PERFORMANCE goods.
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site and of the products promoted therein.
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: May 12, 2015
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