Abramis Sp. z o.o. v XiaoPing

WIPO Case No. D2024-4022

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Abramis Sp. z o.o. v. XiaoPing

Case No. D2024-4022

1. The Parties

Complainant is Abramis Sp. z o.o., Poland, represented by JWP Patent & Trademarks Attorneys, Poland.

Respondent is XiaoPing, China.

2. The Domain Name and Registrar

The disputed domain name <mikadoangling.com> (the “Domain Name”) is registered with Realtime Register

B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2024. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (unidentified) and contact information in the Complaint. The Center sent an email communication to Complainant on October 2, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 2024.

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 Respondent of the Complaint, and the proceedings commenced on October 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2024.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 7, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant produces, distributes and sells angling equipment worldwide, which it sells under the MIKADO Mark. Complainant owns trademark registrations for the MIKADO Mark (or the “Mark”) including: United Kingdom trademark registration No. UK00917260522 (February 1, 2018) and European Union trademark registration No. 017260522 (registered February 1, 2018), for use with a variety of products including angling accessory bags, tackle boxes, reels, fishing lines and rods, clothing and boots for fishing. Also, Complainant has used as its company and business name “Mikado”.

The Domain Name was registered on June 21, 2024. Respondent was using the Domain Name on a website that was offering for sale Complainant’s products using the MIKADO Mark throughout the website, for example, in describing the products (e.g., “Mikado Sensual NG Spinning Rod”) as well as using a graphic

element that Complainant uses on its website — . Indeed, even the photos of the products on

Respondent’s website look like the photos of the products on Complainant’s website. Currently, the Domain
Name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. The Domain Name consists of the MIKADO Mark followed by the term “angling”, preceding the generic Top-Level Domain (“gTLD”) “.com”. The “.com” gTLD suffix should be disregarded in evaluating confusing similarity. Similarly, the term “angling” should be disregarded as descriptive, indicating merely the nature of goods which are supposedly offered by Respondent. Angling, is commonly known as a fishing technique that uses a fish hook attached to a fishing line to tether individual fish in the mouth.

There is no relationship between Respondent and Complainant and Respondent is not a licensee of
Complainant, nor has he otherwise obtained any authorization to use the Mark or company name.
Respondent uses the Domain Name supposedly to offer angling goods, which were manufactured by
Complainant. Because Respondent is not a distributor or an affiliated entity to Complainant, and because
Complainant has no information indicating ever providing such goods to Respondent, or even
communicating with Respondent, it is unlikely that any of Complainant’s goods are actually being offered.
Also, no disclaimers are present on Respondent’s website indicating that Respondent is not affiliated with
Complainant. Respondent is seeking to create the impression on its website that it is affiliated with
Complainant, which is not a bona fide offering of good and use for commercial gain.

The Domain Name was registered in June 2024, years after Complainant registered the MIKADO Mark and Complainant established a global presence. Contents displayed on Respondent’s website refer to Complainant. These facts indicate that Respondent had Complainant’s MIKADO Mark in mind when it registered the Domain Name. Respondent uses the Domain Name in connection with a website that gives the false impression that it is authorized by, or affiliated with, Complainant. The website pretends to offer Complainant’s products for sale. The Domain Name is being used to attract Internet users by creating a likelihood of confusion with Complainant’s MIKADO Mark which it wholly incorporates in combination with the goods indication “angling” and a gTLD extension.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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 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.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “angling” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Domain Name and the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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 a disputed domain name.

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 Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

It is undisputed that there is no relationship between the Parties and Complainant has not licensed or otherwise authorized Respondent to use the Mark. Complainant argues that by using the Mark on Respondent’s website while offering for sale angling products that appear to be the same as Complainant’s angling products in connection with the Mark, such use is neither a bona fide offering of goods or services under the Policy nor is it a legitimate noncommercial or fair use of the Domain Name.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

In the present case, the Panel notes that Complainant was using the MIKADO Mark internationally many
years before Respondent registered the Domain Name <mikadoangling.com> on June 21, 2024.
Furthermore, the facts show: (1) Respondent has not shown any rights or legitimate interests in the Domain
Name; (2) Respondent registered a domain name that is identical to the Mark adding the descriptive term
“angling” which describes Complainant’s products; (3) Respondent’s website uses the MIKADO Mark
throughout, Complainant’s logo and photos picturing angling products that look like the images of the same
or similar products on Complainant’s website; and (4) Respondent is using a confusingly similar Domain
Name to sell products that are allegedly similar to Complainant’s products. For all of these reasons, the
Panel finds it is highly unlikely Respondent was unaware of the Mark when registering the Domain Name.

The Panel further concludes that by using a confusingly similar Domain Name in conjunction with an imitative website as described above, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MIKADO Mark as to the source,

sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within
the meaning of the Policy.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of Complainant’s Mark, and the composition of the Domain Name, and finds that in the circumstances of this case the current passive holding of the Domain Name does

not prevent a finding of bad faith under the Policy.

The Panel finds that 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 Domain Name <mikadoangling.com> be transferred to Complainant.

/Harrie R. Samaras/
Harrie R. Samaras
Sole Panelist
Date: November 15, 2024