ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Penn Fishing Tackle Manufacturing Co. v. 宋信涛 (Xin Tao Song) Case No. D2025-2841 1. The Parties The Complainant is Penn Fishing Tackle Manufacturing Co., United States of America (“United States” or “US”), represented by Neal & McDevitt, United States. The Respondent is 宋信涛 (Xin Tao Song), China. 2. The Domain Names and Registrars The disputed domain name
is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name is registered with Xiamen 35.Com Information Co., Ltd. The disputed domain name is registered with Cloud Yuqu LLC (Chengdu West Dimension Digital Technology Co., Ltd., Xiamen 35.Com Information Co., Ltd. and Cloud Yuqu LLC are collectively referred to as the “Registrars”). The disputed domain names are collectively referred to as the “Disputed Domain Names”. 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2025. On July 18, 2025, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Disputed Domain Names. On July 21 and July 24, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2025, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. On July 24, 2025, the Center informed the Parties in Chinese and English, that the language of the registration agreements for the Disputed Domain Names is Chinese. On July 29, 2025, the Complainant filed an amended Complaint confirming its request that English be the language of the proceedings. The Respondent did not submit any comment on the Complainant’s submission.
page 2 The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on July 30, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2025. The Center appointed Andrew Sim as the sole panelist in this matter on August 26, 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 Complainant trades by its well-known PENN brand. In connection with the business, the Complainant has used the PENN brand extensively in connection with fishing reels since as early as 1931, and on fishing rods and fishing lines since 1974. The Complainant markets and advertises its goods under the PENN brand extensively in the United States and has significant Internet presence. The Complainant is owner of the several trademarks consisting of the wording “PENN” (the “Mark”), with United States trademark registration. For example, Jurisdiction Mark Registration Number Registration Date Class Covered United States 674119 February 17, 1959 International Class: 28 (Fishing Reels) 1,009,216 April 22, 1975 International Class: 28 (Fishing Rods and Fishing Line) 4,457,475 December 31, 2013 International Class: 28 The Mark has become widely recognized as a leading brand in the fishing industry. Based on the evidence submitted by the Complainant, the Respondent registered the Disputed Domain Names in May and June 2025. As shown in Annex 5 to the Complaint, the Respondent’s websites use the Complainant’s logo featuring the Mark in the same manner as the Complainant’s logo used on its official website. They also feature the same or similar content – offering fishing equipment at reduced prices – as is sold by the Complainant under the PENN brand. The Complainant also submits that after the Complainant submitted an abuse report to the Registrar of the disputed domain name , it began redirecting to the disputed domain name . Similarly, shortly after the Complainant submitted an abuse report to the Registrar for the disputed domain name , it began redirecting to the disputed domain name .
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names. The Complainant contends that the Disputed Domain Names are identical or confusingly similar to the Mark in which the Complainant has rights. Each of the Disputed Domain Names fully incorporates Complainant’s Mark and largely resembles the Complainant’s domain name. The Disputed Domain Names only differ by the addition or removal of a few letters. The addition of the geographical designation “us” and the word “fish” – a generic term that identifies the contents of the websites – does not eliminate the confusing similarity. The “.com” generic Top-Level Domain (“gTLD”) is disregarded under the first element confusing similarity test. Given the Complainant’s longstanding use, broad geographic reach, and strong online presence, the Complainant has substantial common law rights in the PENN mark. Along with the fact that the Mark has been registered, the Complainant contends that consumers associate the Mark with its goods, reinforcing its claim to clear and established rights in the relevant mark. The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names for the reasons below: (a) The Respondent has no legal relationship with the Complainant that would give rise to any license or permission to use or register the Disputed Domain Names; (b) The Complainant has not given the Respondent any authorisation or permission to register or use its Mark in any form; (c) The Respondent is not commonly known by the Disputed Domain Names, “us penn fishing”, “penn fishing us” or “penn fish us”; (d) The Respondent would not be able to provide evidence of legitimate noncommercial or fair use of the Disputed Domain Names; and (e) The Respondent’s registration of multiple, nearly identical domain names suggesting a false affiliation with the Complainant does not constitute fair use. The Complainant finally contends that the Disputed Domain Names were registered and are being used in bad faith for the reasons below: (a) The Mark has been widely used and has a strong reputation in the fishing industry. It is implausible to believe that the Respondent was not aware of the Complainant and its Mark when it registered the Disputed Domain Names; (b) The Respondent’s pattern of registering different variations of the domain names that include the Mark, geographic indicators, and descriptive terms suggests its awareness of the Marks, thus the primary purpose of the Respondent was to divert the Complainant’s customers to the Respondent’s websites; (c) The Respondent aimed to benefit financially from the unauthorised use of the Mark by registering specifically selected domain names that would attract traffic intended for the Complainant’s official website; (d) At the time of the Complainant’s filing the Complaint, the Respondent employed a privacy service to hide its identity, which serves as further evidence of bad faith registration; and (e) As the Complainant’s entire mark appears in the Disputed Domain Names, bad faith registration and use should be inferred.
page 4 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceedings The language of the Registration Agreement for the Disputed Domain Names 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 proceedings shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceedings be English for several reasons, including the fact that: - The websites associated with the Disputed Domain Names are presented in English, indicating the Respondent’s familiarity with the language; - The Disputed Domain Names themselves consist entirely of English characters, underscoring a tacit acknowledgment of an English-speaking audience; and - Requiring proceedings in Chinese would impose unnecessary burden and cost on the Complainant, whose evidence and arguments are prepared in English. In contrast, the Respondent would not have such burden given the aforementioned indications of the proficiency and inclination towards English. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 proceedings 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 Complainant’s Mark and the Disputed Domain Names. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the Mark is reproduced within the Disputed Domain Names. Accordingly, the Disputed Domain Names are confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. A gTLD “.com” is added to the Disputed Domain Names. However, as a standard requirement of domain name registration, the gTLD may be disregarded in the comparison between the Disputed Domain Names and the Mark. Accordingly, “.com” is disregarded for the present purpose. WIPO Overview 3.0, section 1.11.
page 5 Although the addition of other terms here, “us”, “fishing” and “fish”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Names and the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 the Disputed Domain Names. 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 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names such as those enumerated in the Policy or otherwise. Particularly in regards to paragraph 4(c) of the Policy, the Panel finds that: (a) The Respondent has not used the Disputed Domain Names in connection with a bona fide offering of goods or services; (b) The Disputed Domain Names do not correspond with the Respondent’s name nor organization (i.e., “Xin Tao Song”), and there is no evidence of the Respondent operating any business or organization with similar names as the Disputed Domain Names; and (c) There is no evidence that the Respondent is using the Disputed Domain Names for the purpose of legitimate noncommercial or fair use. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may 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. The Panel finds that the circumstances of registering and using the Disputed Domain Names clearly demonstrate the Respondent’s bad faith and have constituted the situation as specified in paragraph 4(b)(iv) of the Policy:
page 6 (a) The Mark has been in use since 1931, more than 90 years before the Respondent’s registration of the Disputed Domain Names which are confusingly similar to the Mark and similar to the Complainant’s own domain name ; (b) Taking into account the Respondent’s use of the Disputed Domain Names, particularly the Respondent’s use of the Complainant’s logo and Mark and promoting fishing-related service, the Respondent is likely to have had actual knowledge of the Mark at the time of the registration of the Disputed Domain Names and is targeting at the Complainant; (c) A presumption of bad faith is created by the fact that the Respondent, being an unaffiliated individual with the Complainant, registered several Disputed Domain Names which are confusingly similar to the Mark and similar to the Complainant’s own domain name, without any authorization and, moreover, without disclosing on the associated websites its lack of relationship with the Complainant, particularly noting the discussion in section 6.2B above. WIPO Overview 3.0, section 3.1.4; and (d) The Respondent’s registration of multiple, nearly identical domain names within a short timeframe demonstrates a deliberate attempt to target the Complainant. The Panel finds that the Complainant has established the third element 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 Names , and be transferred to the Complainant. /Andrew Sim/ Andrew Sim Sole Panelist Date: September 9, 2025
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