Fiskars Brands, Inc. v YinCanrong, YinCanrong

WIPO Case No. D2023-4667

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fiskars Brands, Inc. v. YinCanrong, YinCanrong

Case No. D2023-4667

1. The Parties

The Complainant is Fiskars Brands, Inc., United States of America (“United States”), represented by Quarles

& Brady LLP, United States.

The Respondent is YinCanrong, YinCanrong, China.

2. The Domain Name and Registrar

The disputed domain name <outletgerber.com> is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2023. On November 10, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On November 11, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (Registrant of the Disputed Domain Name <outletgerber.com>, WhoisSecure) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on November 14, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on November 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on December 6, 2023.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 9, 2024. The Panel f inds 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

page 2

4. Factual Background

The Complainant sells knives, tools, and equipment. The Complainant owns a number of trademarks for the name GERBER, including the United States trademark number 512677, registered on July 26, 1949. The Complainant registered the domain name <gerbergear.com> on October 6, 1999, through which it promotes and sells its products.

The disputed domain name was registered on February 14, 2023. The disputed domain name resolves to a website which appears to be of fering to sell the Complainant’s knives or counterfeited copies.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- the disputed domain name is confusingly similar to its trademarks;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The
Complainant must satisfy that:

(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 in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

The 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 disputed domain name. Accordingly, the disputed 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 “outlet” may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

page 3

The Panel f inds the f irst 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The composition of the disputed domain name, comprising the Complainant’s trademarks in their entirety and the addition of the generic term “outlet”, together with the content of the website at the disputed domain name carries a risk of Internet user confusion.

Furthermore, panels have held that the use of a domain name for illegal activity like impersonation/passing
of f or the sale of counterfeit goods can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that:

- in light of the notoriety of the Complainant and of its GERBER mark in the knife and cutting tool industry, coupled with the fact that the disputed domain name incorporates the GERBER mark verbatim, it is evident that the Respondent had actual knowledge of the Complainant’s GERBER mark when the Respondent registered the disputed domain name in February 2023 - nearly seventy-four (74) years af ter the Complainant f irst registered its GERBER mark.

- the Respondent is in default.

- the Respondent actual knowledge of the Complainant’s GERBER mark is further apparent from its sale of authentic or counterfeit GERBER-branded products, and the display of the Complainant’s registered GERBER logo on the websites associated with the disputed domain name.

In using the disputed domain name, the Respondent appears to have intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel f inds that the Complainant has established the third element of the Policy.

page 4

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 disputed domain name <outletgerber.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: January 16, 2024