Decision for dispute CAC-UDRP-108435

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant, conducting business under the company and trade name Parajumpers S.p.A., owns several trademark registrations for the sign PARAJUMPERS, including:

• International trademark registration No. 1119469 for PARAJUMPERS, registered on 11 May 2012 and duly renewed, in classes 9, 18 and 25;
• International trademark registration No. 1184596 for PARAJUMPERS, registered on 23 September 2013 and duly renewed, in class 35;
• European Union trademark registration No. 004905493 for PARAJUMPERS, filed on 13 February 2006 and registered on 13 February 2007, and duly renewed, in classes 9, 18 and 25;
• European Union trademark registration No. 012153771 for PARAJUMPERS, filed on 19 September 2013 and registered on 12 February 2014, and duly renewed, in class 35.

The Complainant is also the owner of an extensive domain name portfolio incorporating the PARAJUMPERS mark, including, inter alia, <parajumpers.it>, registered on 10 November 2005, which is used as the Complainant’s official website, as well as numerous domain names under various generic and country-code Top-Level Domains ("TLD").

The above-mentioned trademark rights are hereinafter collectively referred to as the "PARAJUMPERS Trademark".

The Complainant is an Italian fashion company, founded in 2006 from the collaboration between Ape & Partners S.p.A. and designer Massimo Rossetti. It designs, manufactures, and commercializes outerwear products under the PARAJUMPERS Trademark.

The Complainant has developed an international commercial presence, with its products distributed in various regions, including North America, Europe, and Asia, and supported by showrooms and retail outlets in major cities. The PARAJUMPERS Trademark is used in connection with outerwear products characterized by technical features and high-quality materials designed for protection against low temperatures.

The Respondent is Zsolt Bikadi, an individual residing in Hungary.

The disputed domain name was registered on 11 August 2024 and, at the time of the filing of the Complaint, resolved to a parking page displaying pay-per-click ("PPC") links, including references to the Complainant’s products and to competing goods.

The Complainant contends that the requirements of paragraph 4(a) of the Policy are met and that the disputed domain name should be transferred.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

I. THE COMPLAINANT'S RIGHTS AND THE CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK

The first element of the Policy serves essentially as a standing requirement.

The test for identity or confusing similarity involves a straightforward and reasoned comparison between the Complainant’s trademark and the disputed domain name. This typically entails a side-by-side evaluation of the domain name and the textual elements of the relevant trademark in order to determine whether the mark is recognizable within the domain name. Although each case is judged on its own merits, where a domain name fully incorporates a complainant’s trademark, or where a dominant feature of the mark is clearly evident in the domain name, the domain name will generally be regarded as confusingly similar to the mark for the purposes of the first element. It is well established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) is insufficient to avoid a finding of confusing similarity. The applicable TLD is usually disregarded in this assessment, as it constitutes a technical requirement of domain name registration (see sections 1.7, 1.8, and 1.11.1 of the WIPO Overview 3.0).

While not a substitute for the required side-by-side comparison, the broader factual context of a case may, in appropriate circumstances, support a finding of confusing similarity.

The Panel further notes that considerations such as the date of registration of the trademark, the geographical location of the respective parties, the timing of the domain name registration, or the inherent or acquired strength of the trademark are generally not relevant under the first element of the Policy. Such factors may, however, be relevant under the second and/or third elements of paragraph 4(a) of the Policy.

In the present case, the Complainant has established registered trademark rights in the PARAJUMPERS Trademark, which satisfy the threshold requirement for purposes of standing under the Policy.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, as it incorporates the PARAJUMPERS Trademark in its entirety, with the addition of the terms “stop” and “fakes”. Such terms do not prevent a finding of confusing similarity.

Accordingly, the Complainant has satisfied the first element of paragraph 4(a) of the Policy.

II. THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

Under paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Where a complainant makes out a prima facie case, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).

The Respondent has been identified as Zsolt Bikadi, an individual residing in Hungary.

The Complainant has no relationship whatsoever with the Respondent. The Respondent has not been authorised, whether expressly or impliedly, to use the PARAJUMPERS Trademark or to register or use the disputed domain name.

There is no evidence that the Respondent, whether as an individual, business, or other organisation, has been commonly known by the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark in its entirety together with the terms “stop” and “fakes”. As noted above under the first element, such an addition does not prevent a finding of confusing similarity. UDRP panels have further recognised that such composition carries a risk of implied affiliation and does not, in itself, confer rights or legitimate interests, nor does it amount to fair use (see section 2.5.1 of the WIPO Overview 3.0). Moreover, the addition of the terms “stop” and “fakes” does not dispel such risk and may, on the contrary, reinforce an association with the Complainant and its activities.

The Panel further notes that the term “parajumpers” does not correspond to a commonly used dictionary term nor does it directly describe the goods at issue. While the use of a domain name consisting of a dictionary or descriptive term may, in certain circumstances, support a claim of legitimate interests where the domain name is used in accordance with its ordinary meaning, this is not the case here. The evidence on record shows that, at the time of the filing of the Complaint, the disputed domain name resolved to a parking page displaying PPC links related to the Complainant’s products and to competing goods. This use demonstrates that the disputed domain name has not been registered or used in connection with any dictionary or descriptive meaning of the term, but rather in a manner targeting the Complainant’s trademark.

Accordingly, such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, nor does it amount to legitimate noncommercial or fair use without intent for commercial gain pursuant to paragraph 4(c)(iii) of the Policy. On the contrary, it indicates an attempt to attract Internet users for commercial gain by taking advantage of the Complainant’s trademark.

The Respondent has not submitted a Response and has therefore failed to rebut the Complainant's prima facie case or to demonstrate any of the circumstances set out in paragraph 4(c) of the Policy.

Accordingly, the Panel concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

III. THE REGISTRATION AND THE USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Complainant has sufficiently demonstrated that it holds rights in the PARAJUMPERS Trademark, which predate the registration of the disputed domain name.

The disputed domain name is confusingly similar to the Complainant's PARAJUMPERS Trademark, as it incorporates the mark in its entirety. The addition of the terms “stop” and “fakes” does not prevent a finding of confusing similarity and may reinforce an association with the Complainant’s trademark and its efforts to combat counterfeit products.

Having regard to the distinctiveness of the PARAJUMPERS Trademark and the composition of the disputed domain name, the Panel considers it highly unlikely that the Respondent registered the disputed domain name without having the Complainant and its trademark in mind. The Complainant has submitted evidence showing that a simple Internet search for the term “PARAJUMPERS” returns results exclusively related to the Complainant. Had the Respondent carried out such a search prior to registration, he would have readily become aware of the Complainant’s activities and of its trademark rights.

Even assuming that the Respondent had no prior knowledge of the Complainant’s mark at the time of registration (which the Panel considers unlikely), the Respondent either failed to verify whether the disputed domain name would infringe the Complainant’s earlier rights or did so and nevertheless proceeded with the registration. The Panel recalls that, pursuant to Paragraph 2 of the Policy, it is the registrant’s responsibility to determine whether a domain name registration infringes or violates the rights of a third party. In the present case, this obligation is all the more relevant considering that the Respondent appears to be engaged in domain name investment activities and can therefore be expected to exercise a higher degree of diligence when registering domain names.

The Respondent's use of the disputed domain name confirms this finding. At the time of the filing of the Complaint, the disputed domain name resolved to a parking page displaying PPC links, including references to “Genuine Parajumpers Jackets” and to products competing with those of the Complainant. The Panel considers that such use demonstrates that the disputed domain name has been used to capitalize on the reputation of the Complainant’s trademark by attracting Internet users for commercial gain.

Accordingly, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of his website or of the products or services offered thereon, within the meaning of paragraph 4(b)(iv) of the Policy.

In light of the above, the Panel concludes that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.