Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. of Idstein/Taunus, Germany, represented by Harmsen Utescher, Germany.
Respondent is Zhang Zhi Hong of Pu Tian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the Domain Name. On February 9, 2012, B, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 9, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 10, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint in English and Chinese, and the proceedings commenced on February 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2012.
The Center appointed Yijun Tian as the sole panelist in this matter on March 16, 2012. 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, Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. of Idstein/Taunus, is a company incorporated in Germany. It is one of the leading producers of outdoor and sporting apparel and equipment in Germany, as well as other countries in Europe and Asia.
Complainant is the registered owner of numerous trademarks consisting or including the word “Jack Wolfskin” and “Wolfskin” throughout the world, including German trademark JACK WOLFSKIN (since 1982) and international registrations JACK WOLFSKIN, inter alia in China with a priority of 1994. (Annex 4 to the Complaint). B. Respondent
Respondent, Zhang Zhi Hong of Pu Tian, Fujian, China, registered the Domain Name on February 1, 2012, which is long after Complainant’s trademark registration (since at least 1982). 5. Parties’ Contentions A. Complainant
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
Complainant is the owner of numerous trademark registrations for the terms “Jack Wolfskin” and “Wolfskin”, , including German trademark JACK WOLFSKIN (since 1982) and international registrations JACK WOLFSKIN covering China (since 1994) (see Annex 4 to the Complaint),.
The Domain Name is extremely similar compared to JACK WOLFSKIN trademark of Complainant which is incorporated in full in the Domain Name . The additional element “outlet” is obviously purely descriptive for a typical outlet store and, thus, not able to create a sufficient distance.
Respondent uses the Domain Name for the offer of identical products (e.g. “clothing, footwear, headgear”) (Annex 2 to the Complaint). Respondent also uses on the homepage of the trademarks of Complainant, namely the trademark JACK WOLFSKIN and the trademark “JACK WOLFSKIN + paw device”.
Respondent creates – obviously intentionally – the false impression that the website under is operated by Complainant or a person connected to Complainant. Both are not the case.
The Domain Name is linked with the domain name , which is already subject to UDRP proceedings under the Policy (see Jack Wolfskin v. Huang Yan Jin,WIPO Case No. D2012-0128).
(b) Respondent has no rights or legitimate interests in respect of the Domain Name;
Respondent is to the best of Complainant’s knowledge - not entitled to any trademark, trade name or any other right in the names “Wolfskin” or “Jack Wolfskin”. There is no relationship between Respondent and Complainant.
Respondent has not registered the Domain Name for a bona fide reason nor has he made any bona fide use of the Domain Name.
The use of Complainant’s WOLFSKIN and JACK WOLFSKIN trademarks by way of registering a nearly identical Domain Name constitutes an infringement of Complaint’s rights since Respondent is not the owner of any trademark, trade name or any other right in the names “Wolfskin” or “Jack Wolfskin”.
Additionally, Respondent uses the Domain Name for commercial purposes by way of operating a web-shop, intentionally leading the consumers to the false impression that this web–shop is operated by the Complainant.
(c) The Domain Names was registered and is being used in bad faith.
The Domain Name was registered exclusively for the purpose of exploiting the reputation of Complainant and its trademarks and trade name “Jack Wolfskin”.
Therefore, the Domain Name was registered and used in bad faith, especially in view of the fact that it is used for marketing counterfeits, labeled with the trademarks of Complainant.
Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to his web-shop under , selling counterfeits on this website and, thus, creating a likelihood of confusion with Complainant’s trademarks.
Respondent attempts to mislead the Internet consumers by way of pretending a non-existing commercial connection to Complainant and selling counterfeits. Thus, the Domain Name was obviously registered and used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the Domain Name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or 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 in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The Domain Name is completely English since it covers the English words “jack”, “wolfskin” and “outlet”. The complete Domain Name has nothing to do with China or languages spoken in China.
(b) There is neither a single word in Chinese nor any reference to China on the website of the Domain Name (Annex 2 to the Complaint). The content on the website at the Domain Name is completely in German and not in Chinese.
(c) It is possible to pay for the goods marketed on the Domain Name also in USD or GBP. The owner intentionally submits the offer on the Domain Name (also) to English speaking people from the Untied States of America and/or United Kingdom of Great Britain and Northern Ireland.
(d) The content on the website of indicates a familiarity on the part of Respondent with European languages and, thus, also with the “world language” English.
(e) Complainant is not able to communicate in Chinese. English as the world’s best known language is a reasonable and appropriate language of this administrative proceeding also for fairness reasons, since English is not a native language for either party.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in Germany, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Domain Name includes English words such as “jack”, “wolfskin” and “outlet”. (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047; see also Swarovski Aktiengesellschaft v. Hao Chen,WIPO Case No. D2011-1223).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) The content on the website at the Domain Name is completely in German and not in Chinese; (c) The payment methods provided by the website at the Domain Name include USD or GBP; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent in both the Chinese and English languages that it would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the JACK WOLFSKIN Marks acquired through registration. The JACK WOLFSKIN Marks have been registered worldwide including China (since 1994; Annex 4 to the Complaint) and it has a widespread reputation as one of the leading producers of outdoor and sporting apparel and equipment worldwide.
The Domain Name comprises the JACK WOLFSKIN Marks in its entirety. The Domain Name only differs from the JACK WOLFSKIN Marks by the addition of “-” and the addition of the English word “outlet”. The Panel finds that these do not eliminate the confusing similarity between Complainant’s registered JACK WOLFSKIN Marks and the Domain Name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. HK-0500065).
The Panel finds that the mere addition of the “-” in the middle the JACK WOLFSKIN mark, and addition of the descriptive term “outlet” as a suffix to Complainant’s mark fails to distinguish the Domain Name from the trademark. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “outlet” is “shop” or “store” - an establishment where merchandise is sold, usually on a retail basis. Consumers who visit may be likely to be confused and may falsely believe that is operated by Complainant for selling Jack-Wolfskin branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Name and the JACK WOLFSKIN Marks in which Complainant has rights. (See Swarovski Aktiengesellschaft v. Hao Chen,WIPO Case No. D2011-1223; Groupe Auchan v. Zhenghui WIPO Case No. D2011-2123)
The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Name:
(i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the Domain Name; or
(iii) legitimate non-commercial or fair use of the Domain Name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the JACK WOLFSKIN Marks throughout the world, including China (Annex 4 to the Complaint). According to the information provided by Complainant, Respondent is not an authorized dealer of Jack-Wolfskin branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Name:
(a) There has been no evidence adduced to show that Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Name or reasons to justify the choice of the term “Jack Wolfskin” in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the JACK WOLFSKIN Marks or to apply for or use any domain name incorporating the JACK WOLFSKIN Marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Name. The Domain Name was registered on February 1, 2012, which is long after Complainant registered JACK WOLFSKIN marks in Germany (since 1982) and China (since 1994). The Domain Name is identical or confusingly similar to Complainant’s JACK WOLFSKIN Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the JACK WOLFSKIN Marks with regard to its products. Complainant has registered its JACK WOLFSKIN Marks throughout the world, including Germany, European Community and China. Based on the information provided by Complainant, Complainant is one of the leading producers of outdoor and sporting apparel and equipment in Germany, as well as other countries in Europe and Asia, and “for more than 25 years, the Complainant has been dedicated to the production and sale of the aforementioned goods and has, thus, acquired an outstanding reputation for high-quality innovative products in Germany, Europe and many other states throughout the world”.
It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Name (in 2012).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra., “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).”
Thus, the Panel concludes that the Domain Name was registered in bad faith with the intent to create an impression of an association with Complainant’s JACK WOLFSKIN Marks.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar Domain Name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.
Respondent currently uses the Domain Name for the offer of identical products to Complainant (e.g. “clothing, footwear, headgear”) (Annex 2 to the Complaint). Respondent also uses on the homepage of the trademarks of Complainant. The content of the website is written in the German language.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the JACK WOLFSKIN Marks, the Panel finds that the public, particularly a consumer in Europe, is likely to be confused into thinking that the Domain Name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Name is resolved. In other words, Respondent has through the use of a confusingly similar Domain Name created a likelihood of confusion with the JACK WOLFSKIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepages of the Domain Name, Internet users may be led to believe that the Domain Name is either of Complainant or of the official authorized partners of Complainant, which is not the case. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the Domain Name is used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the Domain Name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Domain Name and the conduct of Respondent as far as the websites to which the Domain Name resolves is indicative of registration and use of the Domain Name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: April 25, 2012
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