1.1 The Complainant is Jack Wolfskin Ausrüstung of Taunus, Germany, (the “Complainant”) represented by Harmsen.Utescher, Germany.
1.2 The Respondent is Nugie Putra of Jogyakarta, Indonesia (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. On June 26, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed Domain Name. On June 27, 2012, GoD, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2012.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 3, 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
4.1 The Complainant in these administrative proceedings is Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA, a company based in Idstein in Germany and is one of the leading producers of outdoor and sporting equipment in Germany, Europe and Asia. The product portfolio of the Complainant includes all kinds of outdoor equipment, especially clothing, footwear and headgear and are all labeled with the trademark JACK WOLFSKIN..
4.2 The Respondent in these proceedings according to the WhoIs database is Nugie Putra, an entity based in Jogyakarta in Indonesia. The WhoIs record demonstrates that the Respondent created the disputed Domain Name on November 30, 2011. 5. Parties’ Contentions A. Complainant
5.1 The Complainant owns numerous trademark registrations for the term JACK WOLFSKIN and according to the registration certificates attached to the Complaint, own the following trademark registrations:
- German Trademark 104940 JACK WOLFSKIN with a priority of August 23, 1982;
- Community Trademark Registration 6733208 JACK WOLFSKIN with a priority of March 6, 2008;
- International Registrations 629193 JACK WOLFSKIN and 643936 JACK WOLFSKIN inter alia protected for the territory of China with a priority of 1994/1995; and
- Community Trademark registration 3034915 “JACK WOLFSKIN + paw device” with a priority of January 31, 2003.
These trademarks are registered inter alia for “clothing, footwear and headgear” in class 25 and also for the corresponding retail services in class 35.
5.2 The Complainant contends that the disputed Domain Name is nearly identical to the Complainant’s trademark JACK WOLFSKIN in which the Complainant owns exclusive rights. The Complainant asserts that the disputed Domain Name incorporates in full the Complainant’s trademark and the mere addition of the word “Jacken”, which means jackets in the German language, at the end of the disputed Domain Name does not reduce the likelihood of confusion with the Complainant’s trademark. The Complainant submits in this regard that the incorporation of a trademark in its entirety into a disputed domain name is sufficient to establish that the disputed Domain Name is identical and confusingly similar to the trademark in question as held in Jack Wolfskin v. Huang Yan Jin,WIPO Case No. D2012-0128.
In addition, with reference to a printout from the Respondent’s home page, the Complainant contends that the Respondent uses the disputed Domain Name for the offer for sale of products identical to those sold by the Complainant such as clothing, footwear and headgear side by side with goods bearing the Complainant’s trademark JACK WOLFSKIN. The Complainant alleges that the Respondent is therefore creating the false impression that the disputed Domain Name is operated by the Complainant or a person connected to the Complainant. The Complainant asserts that it has nothing to do with the website or any of the offers submitted by the Respondent under the disputed Domain Name, and for these reasons argues further that the disputed Domain Name is confusingly similar to the trademarks of the Complainant.
5.3 The Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed Domain Name as the Respondent is not entitled to any trademark, tradename or any other right in the trademark JACK WOLFSKIN nor is there any relationship, between the Complainant and the Respondent which entitles the Respondent to use the trademark JACK WOLFSKIN or to register the disputed Domain Name incorporating the Complainant’s trademark. The Respondent has also failed to demonstrate that it has any alleged rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(c) of the Policy. It is also submitted that the Respondent has not registered the disputed Domain Name for any bona fide reasons nor to make bona fide use of the disputed Domain Name more so as the registration of a nearly identical domain name constitutes an infringement of the Complainant’s rights. In addition, it is stated that the Respondent uses the disputed Domain Name for commercial purposes by way of operating a web-shop, intentionally leading consumers to the false impression that this web-shop is operated by the Complainant. In support of these contentions, the Complainant relies on the cases of (i) Jack Wolfskin v. Huang Yan Jin,WIPO Case No. D2012-0128 and (ii) Thomas Wuttke v. Sharing,WIPO Case No. D2011-1809.
5.4 On the question of bad faith use and registration, the Complainant asserts that the Respondent registered and has used the disputed Domain Name for the purpose of exploiting the reputation of the Complainant and its trademarks and the trade name JACK WOLFSKIN. The Complainant submits that the Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to its web-shop under the disputed Domain Name by selling clothes and articles to create a likelihood of confusion with the Complainant’s trademarks. The Complainant also submits that the Respondent deceives Internet visitors by creating the impression that there is a non-existent commercial connection between the Respondent and the Complainant. The Complainant concludes that the disputed Domain Name was obviously registered and used in bad faith. Again, the Complainant places reliance on the cases of (i) Jack Wolfskin v. Huang Yan Jin, supra and (ii) Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809). B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights: (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of the three elements in these proceedings. A. Identical or Confusingly Similar
6.3 The Complainant has produced sufficient evidence of ownership of trademark registrations namely, German, Community and International trademark registrations in the words JACK WOLFSKIN which was attached to the Complaint. The Panel accepts that the disputed Domain Name is undoubtedly confusingly similar and or identical to the Complainant’s trademark in which it has exclusive rights. The Panel finds that the mere addition of the word “jacken” which is said to mean jackets in German, a hyphen and the suffix “info” does not in any form diminish the likelihood of confusion with the Complainant’s trademark. On the contrary, the addition of the word “jacken” increases the likelihood of confusion with the Complainant’s trademark. See also in this regard, previous UDRP decisions such as Dr Martens International Trading GmbH, Dr Maertens Marketing GmbH v. A Domain Privacy/ Transure Enterprise Ltd.,WIPO Case No. D2009-1253 where the addition of the term “shoes” to the disputed domain name was held to be incapable of preventing confusing similarity with the complainants’ widely well-known Dr. Martens trademark. Furthermore, just as the Complainant submits, the Panel is satisfied that the disputed Domain Name wholly incorporates the Complainant’s trademark JACK WOLFSKIN in its entirety and that on its own is sufficient to establish that the disputed Domain Name is confusingly similar to the Complainant’s trademark. In support of this finding the Panel relies on the recent decision in Jack Wolfskin v. Huang Yan Jin, supra cited by the Complainant where in similar circumstances the disputed domain name in that case was held to be confusingly similar to the Complainant’s trademark by reason of incorporating entirely the Complainant’s trademark JACK WOLFSKIN despite the additional letter “e” in the disputed domain name.
6.4 Accordingly, the Panel is satisfied that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark in accordance with paragraph 4(a) of the UDRP Policy. B. Rights or Legitimate Interests
6.5 The Panel finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to produce any evidence of any legitimate relationship between the Complainant and the Respondent or consent or any license issued to the Respondent authorizing the Respondent to register the disputed Domain Name incorporating the Complainant’s trademark or to use the Complainant’s trademark JACK WOLFSKIN. The Panel also finds that the Respondent has not and did not register the disputed Domain Name for bona fide reasons. The Respondent is clearly using the disputed Domain Name for unlawful commercial purposes by creating the false impression that the website linked to the disputed Domain Name, which offers for sale identical products as those sold by the Complainant and products bearing the Complainant’s trademark, is operated by, or approved by the Complainant. The Panel finds that such use cannot be described as having rights or legitimate interests. See in support of this the decision in Thomas Wuttke -v- Sharing, supra as cited by the Complainant.
6.6 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.7 On the question of bad faith registration and use, the Panel finds without any doubt that the Respondent registered and continued to use the disputed Domain Name in bad faith. In arriving at this finding, the Panel has considered a number of undisputed factors. Firstly, the Respondent must have known or is deemed to have known of the Complainant’s world-wide exclusive rights in the trademark JACK WOLFSKIN since 1982 having decided to register the disputed Domain Name on November 30, 2011. Secondly, the Complainant has produced a printout of the Respondent’s website which indicates that the disputed Domain Name is linked to a website that offers for sale products, such as clothing and head gear, identical to those of the Complainant and products bearing the Complainant’s trademark. The Panel finds that this is clear and irrefutable evidence that the Respondent is exploiting the reputation and goodwill of the Complainant’s trademark and concludes that such conduct supports a finding of bad faith use and registration pursuant to paragraph 4(b) of the policy. See also in this regard the cases of Jack Wolfskin -v- Huang Yan Jin, supra and Thomas Wuttke -v- Sharing, supra, earlier cited. Thirdly, as explained in paragraph 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to rebut the evidence forwarded by the Complainant in these proceedings. 7. Decision
7.1 For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name, be transferred to the Complainant.
Ike Ehiribe
Sole Panelist
Date: August 17, 2012
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