WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ape & Partners S.p.A. and PJS International S.A. v. Pjs Parajumpers
Case No. D2015-0637
1. The Parties
The Complainants are Ape & Partners S.p.A. of Segusino, Italy (the “first Complainant”); and PJS International S.A. of Luxembourg (the “second Complainant”), represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Pjs Parajumpers of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <parajumpers.xyz> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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.
On April 13, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 14, 2015, the Complainants 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.
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 Chinese and English, and the proceeding commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on May 18, 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 second Complainant, PJS International S.A., is the registered owner of the trade marks PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS (word and design mark) (collectively referred to as “the Complainants’ Marks”) in many countries worldwide. These include:
- International trademark registration No. 1119469 for PARAJUMPERS, granted on May 11, 2012, in Classes 9, 18 and 25; the designated jurisdictions include China;
- Chinese trademark registration No. 6294841 for PARAJUMPERS, filed on September 25, 2007 and granted on April 7, 2010, in Class 25;
- Community trademark registration No. 004905493 for PARAJUMPERS, filed on February 13, 2006 and granted on February 13, 2007, in Classes 9, 18, 25;
- Community trademark registration No. 004905451 for P.J.S THAT OTHERS MAY LIVE PARAJUMPERS, filed on February 13, 2006 and granted on February 13, 2007, in Classes 9, 18, 25;
- United States of America trademark registration No. 3486435 for PARAJUMPERS, filed on June 5, 2006 and granted on August 12, 2008, in Classes 9, 18 and 25; and
- Russian trademark registration No. 365020 for PARAJUMPERS, filed on September 24, 2007 and granted on November 17, 2008, in Class 25.
The first Complainant is the exclusive licensee of various registered trade marks owned by the second Complainant including the Complainants’ Marks. The Complainants’ Marks are used in respect of winter coats and jackets for men, women and children. The Complainants assert that over the years, the Complainants’ Marks have become well known in the field of winter garments, especially for coats and jackets, for their high quality. This success, in particular, is due to the first Complainant’s ability to produce innovative products, which are made with high-quality materials, suitable to protect the human body against freezing temperatures. The Complainants’ Parajumper garments are one of the most popular in the market of winter garments, both in Italy and abroad, and also well known for the high level of manufacture and innovative designs.
Products bearing the Complainants’ Marks are commercialized in North America, Europe and Asia, with showrooms in New York, Toronto, Helsinki, London, Seoul, Tokyo and many other cities. The Complainants’ Marks are featured in important international fashion events such as the “Premium Fashion Trade Show” in Berlin, Germany, a famous trade platform for international designer collections, and “Pitti Uomo N. 83” in Florence, Italy, in which the most famous fashion companies of the world showcase the best of the following year’s collections. Celebrities and important personalities from international show business are often photographed while they are wearing Parajumpers jackets.
The disputed domain name was registered by the Respondent on November 25, 2014.
The first Complainant is the owner of several country-code Top-Level Domains (ccTLDs) incorporating the trade mark PARAJUMPERS, e.g., <parajumpers.it> (registered on November 10, 2005) and <parajumpers.nl> (registered on December 1, 2008). The first Complainant is also the owner of the domain names, amongst others:
On February 24, 2015, the Complainants’ attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name to their client. The Respondent never replied.
5. Parties’ Contentions
The disputed domain name reproduces, in its entirely, the PARAJUMPERS trade mark in which the Complainants have prior rights. It is also identical to the above-mentioned domain names registered by the first Complainant. There is no difference between the trade mark PARAJUMPERS and the disputed domain name except for the new generic Top-Level Domain (gTLD) “.xyz”, which may be ignored for the purpose of comparison. The disputed domain name is also almost identical to the trade mark P.J.S THAT OTHERS MAY LIVE PARAJUMPERS, since it shares with the latter the primary element, PARAJUMPERS.
The Respondent has no rights nor legitimate interests in the disputed domain name for the following reasons:
(i) the disputed domain name does not correspond to a trade mark registered in the name of the Respondent;
(ii) the Complainants have not licensed or otherwise authorized the Respondent to use the Complainants’ Marks nor to apply for any domain name incorporating the Complainants’ Marks;
(iii) the disputed domain name does not correspond to the name of the Respondent, as the latter merely usurped the Complainants’ Marks; and
(iv) the Respondent is using the disputed domain name in connection with a website from which counterfeit Parajumpers products are offered for sale.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent must have been aware of the existence and fame of the Complainants’ Marks since the disputed domain name was registered only five months ago. The Complainants’ Marks are widely used and known all around the world, including in China. If the Respondent had researched the term “parajumpers” using any search engine on the Internet before registering the disputed domain name, it would inevitably have come across the existence of the Complainants’ official website.
Furthermore, the disputed domain name is currently used in connection with a website offering counterfeit products bearing the Complainants’ Marks. PARAJUMPERS and P.J.S. THAT OTHERS MAY LIVE PARAJUMPERS-branded goods are offered for sale at prices that are considerably lower than those of original Parajumpers products. All the trade marks, images and photographs posted on the Respondent’s website have been copied from the Complainants’ official websites and catalogues. The outcome of the Respondent’s conduct is that customers are led to believe that the website linked to the disputed domain name is somehow affiliated and/or owned by to the Complainants. This conduct clearly represents an opportunistic and unfair use of the disputed domain name.
The Respondent’s website also includes a specific webpage on which apparel bearing brand names such as Woolrich, Duvetica and Nobis are promoted. The Respondent is thereby also using the disputed domain name for the sale of products of the Complainants’ direct competitors.
Finally, bad faith is also evidenced by the Respondent’s failure to respond to the Complainants’ cease and desist letter.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement in this case was Chinese. Paragraph 11(a) of the Rules stipulates 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 Complainants requested that English be taken to be the language of the proceeding for the reason that the Respondent’s website is entirely in English and the Complainants, being an Italian and a Luxembourg company, respectively, are not familiar with Chinese. Since English is an international language that is widely known to many and given the level of comfort of the respective parties with the language, it would be fair for English to be the language of the proceeding.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Panel determines that the Complainants’ request is reasonable in the circumstances of this case. The Panel further notes that the Respondent did not object to the Complainants’ request and has been given a fair opportunity to present its case. It would cause unnecessary expense to the Complainants and unduly delay the proceeding if the Complainants were required to translate all the documents pertaining to this proceeding.
The Panel accordingly stipulates that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Complainants have established that they have rights in the PARAJUMPERS and P.J.S THAT OTHERS MAY LIVE PARAJUMPERS trade marks. It has consistently been held in numerous UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trade mark when the domain name incorporates the trade mark, or a confusingly similar version, regardless of the other terms in the domain name. In this case, the primary element in the disputed domain name consists of the second Complainant’s PARAJUMPERS trade mark. The gTLD “.xyz” may be disregarded. Hence, the Panel finds the disputed domain name to be identical to the trade mark PARAJUMPERS and confusingly similar to P.J.S THAT OTHERS MAY LIVE PARAJUMPERS in which the Complainants have rights.
The first requirement of paragraph 4(a) of the Policy has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out examples of circumstances which, if established by a respondent, can demonstrate its rights or legitimate interests in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Since there is no evidence demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, the Panel is left to only consider the submissions made by the Complainants.
In this case, the second Complainant has not licensed nor authorized the use of the Complainants’ Marks to the Respondent. There is nothing on the Respondent’s website which disclaims any relationship or connection with the Complainants. It is therefore reasonable to expect that Internet users reaching the Respondent’s website would believe that it is somehow associated with, or endorsed by the Complainants. The unauthorized appropriation of the second Complainant’s PARAJUMPERS trade mark in a domain name for commercial use cannot be considered to be justifiable, and the circumstances do not show a bona fide offering of goods or services.
The Respondent notably indicated its name in the WhoIs records as “Pjs Parajumpers” which is a a combination of the PARAJUMPERS trade mark and an element in the second Complainant’s other trade mark, P.J.S THAT OTHERS MAY LIVE PARAJUMPERS. The Respondent has not shown with evidence that it is indeed commonly known by the name or the name “Pjs Parajumpers” or “Parajumpers”. In the absence of a rebuttal from the Respondent, the Panel finds the Respondent’s name to be suspicious and draws an adverse inference therefrom.
The Panel is accordingly of the view that the Complainants have established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has not rebutted the Complainants’ contentions, the Panel finds for the Complainants in regard to the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel is of the view that there has been improper use of the Complainants’ Marks. The Panel is persuaded that the Respondent has, by using the disputed domain name, acted in bad faith and has “intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location”. These circumstances, namely the incorporation of the second Complainant’s PARAJUMPERS trade mark, the copying of content from the Complainants’ official websites and catalogues, the offering of the goods of competitors of the Complainants on the Respondent’s website, and the failure of the Respondent to respond to the Complainants’ cease and desist letter and to this proceeding, all provide the bases upon which the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
The Panel refrains from making any finding on the issue of whether counterfeit products were in fact offered for sale on the Respondent’s website as no direct and conclusive evidence was adduced by the Complainants in this regard.
The Panel therefore finds that the Complainants have satisfied the third requirement of paragraph 4(a) of the Policy.
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 <parajumpers.xyz> be transferred to the first Complainant, Ape & Partners S.p.A., as requested in the Complaint.
Date: May 24, 2015