Pennfish.com

The timeline behind pennfish.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

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”). page 2 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 “www.pennfishing.com” 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. page 3 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 Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint and amended Complaint in English, and has requested that English be the language of the proceeding for the following main reasons: (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. page 4 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 Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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 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 Respondent to use the PENN trademark or to register or use any domain name incorporating the PENN marks; (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 page 5 (iii) there has been no evidence adduced to show that Respondent was making a legitimate noncommercial 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. Therefore, Respondent has attempted to make profits through the Internet traffic attracted to the website under the disputed domain name incorporating Complainant’s trademark. 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 Complainant’s PENN trademark entirely, and that the use of Complainant’s trademark on the website under 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

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.