WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PJS International SA v. Carl Johansson
Case No. D2013-0807
1. The Parties
The Complainant is PJS International SA, Luxembourg, Luxembourg, represented by Ape & Partners SPA, Italy.
The Respondent is Carl Johansson, Stockholm, Sweden.
2. The Domain Name and Registrar
The disputed domain name <parajumpers-outlet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2013 concerning the domain names <parajumpers-outlet.com> and <parajumpers.eu>. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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. On May 16, 2013, the Complainant filed an amendment to the Complaint confirming that the Complaint no longer concerns the domain name <parajumpers.eu>.
The Center verified that the Complaint together with the amendment to 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 May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on June 12, 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 incorporated in Luxembourg.
The Complainant owns Community Trade Mark No. 4905493 registered on February 13, 2007 and International Registration No. 1119469 registered on May 11, 2012, both for PARAJUMPERS in classes 9, 18 and 25.
In 2009, the Complainant granted an exclusive license to an Italian company, Ape & Partners SPA, to distribute clothing and outerwear under the marks PARAJUMPERS and PJS in more than 20 countries.
The Respondent registered the disputed domain name on August 6, 2012.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant relies on its registered trademarks, mentioned above.
The Complainant adds that it has granted the exclusive license to Ape & Partners SPA for the purpose of selling mainly clothing and outerwear in more than 20 countries “and recently also through the website at “www.parajumpers.it”.
Rights or Legitimate Interests
The Complainant contends that it has never authorised, or otherwise consented to the Respondent’s use of the Complainant’s trademark, yet the Respondent has been offering clothes and outerwear by reference to the Complainant’s trademark via the website at the disputed domain name.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used to attract Internet users for commercial gain by offering products purporting to be PARAJUMPERS-marked goods for sale with significant price reductions in the range of 40 % to 60 %. By reproducing images and a copyright notice associated with the Complainant’s trademarks, the website to which the disputed domain name resolves creates confusion as to the source, affiliation, sponsorship or endorsement of the website and the products offered for sale thereon. This shows that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Standard of proof
Paragraph 4.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that the general stand of proof under the UDRP is on the “balance of probabilities”, whereby an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. “Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.”
Paragraph 4.6 of WIPO Overview 2.0 sets out the consensus view of UDRP panels that a respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described below with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Paragraph 4.6 of WIPO Overview 2.0 goes on to state:
“Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (notwithstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.”
B. Identical or Confusingly Similar
The Complainant has established rights in PARAJUMPERS based on its two registered trademarks mentioned above.
However, the Complaint, which is extremely brief, does not discuss the requirement that the disputed domain name be identical or confusingly similar to the trademark. In its Complaint, under the heading referring to the first element of the Policy, the Complainant simply invokes its registered trademarks (as well as the exclusive licence which it granted to another party) and moves on.
In a communication to the Complainant dated May 15, 2013 requesting the Complainant to submit an amendment or amended Complaint in light of the fact the Complaint no longer concerns the domain name <parajumpers.eu>, the Center further asked the Complainant to confirm that it had no further comments in relation to the three elements under paragraph 4(a) of the Policy. Thereafter the Complainant incorporated into its amendment to the Complaint some slightly expanded comments in relation to the second and third elements but did not take the opportunity to enhance its submission under the first element.
While it may be said to be obvious that the combination of the trademark plus additional descriptive term would pass the threshold test for confusingly similarity (see paragraphs 1.2 and 1.9 of WIPO Overview 2.0), it is not unreasonable to expect the Complainant to take the trouble to actually state the argument.
In this case, the Panel is of the opinion that the Complainant’s submission does not even qualify as one which merely repeats or paraphrases the UDRP (see section 6.A above); it completely omits any discussion of the merits of a critical component, i.e., identity or confusing similarity between the Complainant’s trademark and the disputed domain name, which it has to prove.
For the above reasons, the Panel finds that the Complainant has failed to establish the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie 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 the 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 […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Panel would have expected the Complainant to at least refer to the non-exhaustive factors evidencing lack of rights or legitimate interests set out in paragraph 4(c) of the Policy and to discuss at least those which were most relevant.
The Complainant’s case (combining its submissions on both the second and third UDRP elements) is that, without the Complainant’s authorisation, the Respondent has used its trademark for a website offering PARAJUMPERS-marked goods for sale with significant 40% to 60% price reductions and that the Respondent has created public confusion by reproducing images and a copyright notice associated with the trademark.
The Complainant’s original one-sentence submission on bad faith merely alleged that the Respondent was offering counterfeit products, “pretending to be an authorized Parajumpers outlet”. The amendment to the Complaint referred simply to the “significant” 40 to 60% price reductions on the Respondent’s website. In this Panel’s view, the Complainant cannot ask the Panel to infer that the goods sold at the website under the disputed domain name are counterfeit by simply referring to the discounted price advertised on the website. Further evidence, or at least explanation, is required. If the Panel is not in a position to conclude that the goods are counterfeit, then the question arises as to whether the Respondent might qualify as a reseller making a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. However, the Complaint does not contemplate this possibility, let alone discuss the applicable reseller principles as set out in paragraph 2.3 of WIPO Overview 2.0.
In this Panel’s view, it is the Complainant’s responsibility to clearly address such matters in its Complaint.
Furthermore, the Complainant has produced no evidence at all with the Complaint apart from trademark registration printouts and the trademark licence.
Despite resting its case entirely on the content of the Respondent’s website, the Complainant has provided no screenshot of the website. Accordingly there is no evidence of the alleged offering of PARAJUMPERS-marked goods, or of their prices, or of the manner in which the goods were offered for sale including use of allegedly infringing images and an inappropriate copyright notice. Nor is there any corresponding evidence showing the Complainant’s use of the relevant source images which were allegedly copied or as to prices charged for the Complainant’s own goods.
Paragraph 4.5 of WIPO Overview 2.0 expresses the consensus view that UDRP panels may undertake “limited” factual research into matters of public record. The Panel did indeed visit the website at the disputed domain name on June 21, 2013 but, at that point it comprised only a message stating that the account had been suspended. In the Panel’s view, it is not appropriate for the Panel to engage on a more comprehensive hunt for basic information or evidence which it is the responsibility of the Complainant to produce in order to prove its case.
The Complainant has therefore failed to establish the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Complainant’s case on bad faith is equally deficient. It amounts to little more than a couple of conclusory statements, which essentially reiterate paragraph 4(b)(iv) of the Policy.
As explained in section 6.C above, the Complainant has failed to address a key issue relevant to an assessment of likelihood of confusion, namely whether the Respondent is a supplier of counterfeit products or a reseller of the Complainant’s own goods. Also, the Complainant has supplied no evidence in support of its assertion as to the manner in which the Respondent has allegedly used its website to create confusion with the Complainant’s trademark.
If the Complainant had established that its mark was well-known, that still might ultimately have led to a conclusion of “passive holding” in bad faith in light of the status the website under the disputed domain name when the Panel visited it on June 21, 2013. See paragraph 3.2 of WIPO Overview 2.0. However, the Complainant has provided no information whatever about the business being conducted by the Complainant or its licensee beyond the fact that it allegedly involves sale of clothing in over 20 countries. It is not clear when the business started; although it appears from the Complaint that it is only recently that the Complainant’s goods have been sold online. There is no information or evidence about the scale or reputation of the business, whether in Sweden, the Respondent’s location, or anywhere else. Indeed the licence agreement produced by the Complainant does not list the territories which it covers and the Complainant does not otherwise identify the “more than 20 countries” in which the Complainant’s branded products are allegedly distributed.
Accordingly, notwithstanding the Respondent’s default, the Complainant has not met the requisite standard of proof, as explained in section 6.A above, and has therefore failed to establish the third element of paragraph 4(a) of the Policy
For the foregoing reasons, the Complaint is denied.
Date: June 25, 2013