Penn Fishing Tackle Manufacturing Co. v 朱杰 朱杰 (jie zhu)

WIPO Case No. D2025-1331

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Penn Fishing Tackle Manufacturing Co. v. 朱杰 朱杰 (jie zhu)

Case No. D2025-1331

1. The Parties

Complainant is Penn Fishing Tackle Manufacturing Co., United States of America (“USA”), represented by

Neal & McDevitt, USA.

Respondent is 朱杰 朱杰 (jie zhu), China.

2. The Domain Name and Registrar

The disputed domain name <pennfish.com> is registered with Chengdu West Dimension Digital Technology

Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2025. On April 2, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2025, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private) and contact information in the Complaint. The Center sent an email communication to Complainant on April 9, 2025, 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 in English on the same day.

On April 9, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On the same day, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in Chinese and
English of the Complaint, and the proceedings commenced on April 10, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was April 30, 2025. Respondent did not submit any response.

Accordingly, the Center notified Respondent’s default on May 1, 2025.

The Center appointed Yijun Tian as the sole panelist in this matter on May 19, 2025. 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

A. Complainant

Complainant, Penn Fishing Tackle Manufacturing Co., is a company incorporated in the USA. Its PENN brand has been extensively used in connection with fishing reels since at least 1931, and with fishing rods and lines since at least 1974. For over 90 years, Complainant has been a leading manufacturer of high- quality fishing equipment under the PENN Marks, which have become highly recognisable and iconic among fishing enthusiasts.

Complainant has rights in the PENN and PENN-related marks. Complainant is the owner of numerous PENN trademarks worldwide, including the USA trademark registered on February 17, 1959 (the USA Trademark registration number 674119), and the USA trademark registered on April 22, 1975 (the USA

Trademark registration number 1009216). PENN is now widely recognized as a leading brand in the global fishing industry.

B. Respondent

Respondent is 朱杰 朱杰 (jie zhu), China.

The disputed domain name was registered on December 4, 2023. According to the Complaint and the evidence provided by Complainant, the disputed domain name was previously resolved to a deceptive website purporting to offer goods and services under the PENN mark. Respondent deliberately imitates

Complainant’s official website “ by using identical images and replicating the overall website layout.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s PENN trademark. The disputed domain name incorporates the PENN trademark in its entirety. The mere addition of the descriptive term “fish” does not provide adequate distinction to negate the conclusion that the disputed domain name is confusingly similar to the trademark PENN.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreements for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

From the evidence presented on the record, no agreement appears to have been entered into between be the language of the proceeding for the following main reasons:
Complainant and Respondent to the effect that the language of the proceeding should be English.

(a) Website content associated with the disputed domain name is in English, indicating Respondent’s familiarity and capability with the language.

(b) The disputed domain name itself consists solely of English characters, suggesting a clear intent to target English-speaking users.

(c) Respondent has previously participated in at least five WIPO domain name disputes, all conducted in

English.

(d) Requiring Complainant to conduct the proceedings in Chinese would result in unnecessary burden and costs, particularly given that all evidence and submissions are already in English.

(e) Conducting the proceedings in English would not prejudice Respondent, who has consistently

demonstrated competence in English in prior proceedings and through the operation of an English-language

website.

Respondent did not make any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

On the record, Respondent appears to be located in China and thus presumably not a native English
speaker, but considering the following aspects, the Panel has decided that the language of the proceeding
shall be English: (a) the disputed domain name is registered in Latin characters, particularly English words
(e.g., “penn” and “fish”), rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the
disputed domain name is “.com”, so the disputed domain name seems to be prepared for users worldwide,
particularly in English-speaking countries; (c) the disputed domain name resolves to a webpage entirely in
English (Annex 5 to the Complaint); (d) the Center has notified Respondent of the language of the
proceeding in both Chinese and English, and Respondent did not comment on Complainant’s request that
English be the language of the proceeding; and (e) the Center also notified Respondent in both Chinese and
English of the Complaint, and informed Respondent that it would accept a Response in either English or
Chinese, but Respondent chose not to file any Response.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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6.2 Substantive Issues: Three Elements

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
Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds 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 Panel finds Complainant’s PENN mark is recognisable 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.

While the addition of the term “fish” may bear on the 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 disputed

domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, 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 Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While 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 often impossible 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. 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 record, the Panel finds Complainant has established a prima facie case that 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.

More specifically:

(i) there has been no evidence adduced to show that Respondent has used the disputed domain name in marks;

connection with a bona fide offering of goods or services. Respondent has not provided evidence or reasons
to justify the choice of the term “penn”, which is the same as Complainant’s PENN trademark, in the disputed
domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted
(ii) there has been no evidence adduced to show that Respondent has been commonly known by the
disputed domain name. There has been no evidence adduced to show that Respondent has any registered
trademark rights with respect to the disputed domain name. Respondent registered the disputed domain
name on December 4, 2023, after the PENN mark was registered in the USA (since 1959). The disputed
domain name is confusingly similar to Complainant’s PENN marks; and

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(iii) there has been no evidence adduced to show that Respondent was making a legitimate noncommercial under the disputed domain name incorporating Complainant’s trademark.

or fair use of the disputed domain name. By contrast, the disputed domain name previously resolved to a
deceptive website purporting to offer goods and services under the PENN mark. Respondent deliberately
imitates Complainant’s official website by using identical images and replicating the overall website layout.

Based on the available record, the Panel finds 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 Respondent has registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Based on the information provided by Complainant, the Panel finds that Complainant has a reputation in the PENN marks with regard to its products and services. It is not conceivable that Respondent would not have had Complainant’s trademark in mind at the time of the registration of the disputed domain name (in

December 2023). This has been reinforced by the fact that the disputed domain name incorporates the disputed domain name.

Respondent has used the website to offer goods under the PENN mark. Additionally, Respondent deliberately imitates Complainant’s official website by using identical images and replicating the overall website layout. Accordingly, the Panel concludes that Respondent is using a confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <pennfish.com> be transferred to Complainant.

/Yijun Tian/
Yijun Tian
Sole Panelist
Date: June 2, 2025