WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JanSport Apparel Corp v. Zhang Dong
Case No. D2017-2019
1. The Parties
The Complainant is JanSport Apparel Corp of Wilmington, Delaware, United States of America ("United States" or "U.S."), represented by SILKA Law AB, Sweden.
The Respondent is Zhang Dong of Suzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <eastpasl.com> is registered with EIMS (Shenzhen) Culture & Technology Co., Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2017. On October 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2017, 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 October 30, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 31, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 6, 2017. 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, JanSport Apparel Corp., headquartered in Alameda, California, is one of the world's largest backpack manufacturers and distributers. The Complainant was purchased in 2000 by VF Corporation.
The Complainant is the owner of the trademark EASTPAK. The EASTPAK trademark was created some 40 years ago for safety equipment, backpacks and duffel bags for the U.S. Military. By the early 1990's, EASTPAK was used by the Complainant in the United States. Today, EASTPAK is used by VF International under licence from the Complainant for backpacks, messenger bags and suitcases. The VF Corporation turned the EASTPAK brand into a household name and maintains use of EASTPAK in 10 countries, among them China and the United States.
The Complainant has registered the EASTPAK trademark in the United States (for example, U.S. trademark registration no. 1524386, registered on February 14, 1989) and China and operates under the following domain names that contain the mark EASTPAK: <eastpak.com>, <eastpak.asia>, and <eastpak.com.cn>.
The disputed domain name was used to sell products that bear the Complainant's mark EASTPAK. According to the WhoIs information, the disputed domain name was registered on August 14, 2017.
The disputed domain name is currently not in use.
5. Parties' Contentions
The Complainant argues that the disputed domain name <eastpasl.com> is confusingly similar to the Complainant's well-known and registered mark EASTPAK. According to the Complainant, the replacement of the suffix "k" with the suffix "l" does not suffice to distinguish between the EASTPAK and <eastpasl.com>. The complainant further argues that the generic Top-Level Domain ("gTLD") ".com" does not add any distinctiveness to the disputed domain name.
The Complainant argues that the Respondent has never used and does not intend to use the disputed domain name in connection with a bona fide offering of goods. According to the Complainant, the Respondent is not known under the mark EASTPAK.
Furthermore, the Respondent makes unauthorized use of the Complainant's trademark EASTPAK, such as offering a large quantity of presumably counterfeit products, using the Complainant's copyright protected images, and phishing personal information from consumers. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using his well-known mark EASTPAK in 1952. Under these circumstances, the Complainant argues that it is very likely that the Respondent was aware of the Complainant's mark when he registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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 language of the Registration Agreements for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent did not object to the Complainant's request that English be the language of the proceeding;
(iii) The Complainant would have to incur significant expense in translating the Complaint and attached annexes into the Chinese language;
(iv) The Respondent used English in the website previously operated under the disputed domain name; and
(v) The proceeding would have to be delayed considerably.
Upon considering the above, the Panel determines that English will be the language of the proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the mark EASTPAK, among them Chinese registration no.11748525 EASTPAK, registered on April 28, 2014, and U.S. registration no. 1524386 EASTPAK, registered on February 14, 1989.
The Complainant arguments seem to have disregarded the fact that the disputed domain name is <eastpasl.com> and not <eastpal.com>. The disputed domain name <eastpasl.com> differs in spelling from the Complainant's established trademark rights in the mark EASTPAK by the replacement of the letter "k" with the letters "s" and "l".
While disputed domain names comprising phonetic variations of trademarks have been held to be "confusingly similar" in many UDRP cases, the test to be employed is one of confusing similarity. The threshold test for confusing similarity involves a reasoned and straightforward comparison between the complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Side by side comparison of the disputed domain name and the textual components of the Complainant's trademark is challenging in this case because the suffix of the disputed domain name - "sl" - and the Complainant trademark - "k" - are visually and phonetically rather distinct. A reading of the disputed domain name suffix – "pasl" generates a different phonetic impression as opposed to "pak", which carries a unique phonetic sound.
Thus, while the confusing similarity cannot be viewed in vacuum, the Panel search shows that the term "eastpasl" leads to results showing that the Respondent has offered backpacks and other products bearing the Complainant's trademark EASTPAK under or in connection with the disputed domain name. Such behavior which appears to be trading off the Complainant or its registered EASTPAK trademark weighs in favor of finding of confusing similarity between the disputed domain name and the Complainant's registered trademark. WIPO Overview 3.0, section 1.15.
The use of a gTLD is technically required to operate a domain name. Therefore, the ".com" addition does not serve to avoid confusing similarity as it is without significance in the present case (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. WIPO Overview 3.0, section 2.1.
In the present case, the Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof. The Respondent is not commonly known by the name of "eastpasl" or "eastpak". Furthermore, the evidence presented by the Complainant (see Annex 6 to the Complaint) indicates that the Respondent used the disputed domain name to mislead consumers into believing that the disputed domain name is somehow endorsed by or affiliated with the Complainant, which is contrary to the fact. Also, the Respondent might use the disputed domain name to phish personal information from consumers. None of these above should be considered as a legitimate or fair use of the disputed domain name.
The Respondent did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie case.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
It is suggestive of the Respondent's bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant has owned a registration for the EASTPAK trademark since at least 1989, while the Respondent registered the disputed domain name on August 14, 2017. In view of the fact that the Complainant began using the mark long before the Respondent, it is suggestive of the Respondent's bad faith in these particular circumstances (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
As showed in the Complainant's evidence, the Respondent used the disputed domain name to mislead consumers to mistakenly associate it with the Complainant. Examples of such abuse are evident in the use of the trademark EASTPAK and the notice: "Copyright © 2017 EASTPAK outlet. Powered by EASTPAK Online Stores" on the Respondent's website. Also, the Respondent's collection of personal information from consumers while holding itself out as the Complainant. The abuse of the mark EASTPAK by the Respondent under the disputed domain name constitutes an intentional attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product on the Respondent's website. See Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; and Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311.
Reviewing the totality of the circumstances in this case, including the registration of the disputed domain name long after the registration of the Complainant's mark, the abusive use by the Respondent of the Complainant's trademark EASTPAK, the failure of the Respondent to respond to the Complaint, and the implausibility of any good faith use to which the disputed domain name may be put to, the Panel draws the inference that the disputed domain name was registered and is used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <eastpasl.com> be transferred to the Complainant.
Date: December 26, 2017