The Complainant is Thomas Wuttke of Quickborn, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Fundacion Private Whois of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 the Respondent of the Complaint, and the proceedings commenced on November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on November 28, 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
The Complainant is the founder and partner of the textile manufacturing company which uses the trade name “Wellensteyn International GmbH & Co. KG”. In Germany, there are currently over 30 “Wellensteyn Collection Stores”. The Complainant offers its products for sale on its website at the domain names and . The Complainant says that it is well known for its jackets which are distributed by most known retailers in Germany.
The Complainant is the owner of various trademark registrations for device marks containing the designation “Wellensteyn”, including seven German trademarks for WELLENSTEYN with a priority dates between 2000 and 2007, an international mark, a European Community mark, and two marks registered in the United States of America in 2008, on the principal register of the United States Patent and Trademark Office. The mark consists of a device: the word “Wellensteyn” against the background of a shield with a Greek cross. As indicated in the Community trademark registration, and stated in the Complaint, the words contained in the mark have no meaning.
As the Respondent has not submitted a response, there is no direct evidence of the business or nature of the Respondent. While the name of the Respondent might suggest that it is a privacy service, there was no evidence in this case that it was not the actual registrant-in-fact. As there was no evidence on this issue, the Panel has not drawn inferences based on the name of the Respondent.
The Complainant provided (undated) evidence of the website to which the dispute domain name reverts. That website features the Complainant’s mark, and has various photos of jackets (which appear similar to the Complainant’s jackets) together with prices in Euros and descriptions in German. The website was substantively the same when the Panel visited it on December 10, 2012. The disputed domain name was registered on September 11, 2012.
The Complainant has previously been a successful complainant in a case involving somewhat similar circumstances to this one: Thomas Wuttke v. Sharing,WIPO Case No. D2011-1809. That case involved the domain name which was being used in connection with a website offering jackets for sale. 5. Parties’ Contentions A. Complainant
The following were contended by the Complainant:
The Complainant uses its marks widely. (The Complainant provided copies from a catalogue of its products as evidence). The disputed domain name is nearly identical to the Complainant’s registered marks. The disputed domain name is dominated by the element “Wellensteyn” since the element “jacken” is the German word for jackets and thus, merely descriptive. The same applies to the element “outlet”. Therefore the Complainant says that the relevant elements to be compared are identical.
In relation to whether the Respondent has rights or legitimate interests in the disputed domain name, the Complainant says that the registration of the disputed domain name infringes its marks. There is no evidence that the Respondent owns any trademark, trade name or any other rights in the designation “wellynsteyn”. There is no relationship between the Respondent and the Complainant. The Respondent uses the disputed domain name for commercial purposes, by operating a website that offers jackets for sale. The nature of the Respondent’s website would lead Internet users to the conclusion that the Respondent is (falsely) associated with the Complainant. The Complainant assumes that the products offered for sale by the Respondent are therefore counterfeits.
The disputed domain name has been registered and used in bad faith. The disputed domain name was registered exclusively for the purpose of exploiting the Complainant’s reputation and that of its mark. The Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Similar circumstances were a basis for a finding of bad faith in Thomas Wuttke v. Sharing, supra. B. Respondent
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Respondent must submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts, in compliance with the Rules of Procedure, 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.
The Complainant has made those assertions in compliance with the Rules. The Complainant must prove that each of these three elements are present. Each of these three elements are discussed as follows. A. Identical or Confusingly Similar
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2, “[T]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.” Using this test, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s registered mark for WELLENSTEYN. That is, the Panel considers that Internet users may be confused as to whether, or may believe that, the disputed domain name has a connection with the Complainant’s mark. The Panel makes this finding for two reasons.
Firstly, the Complainant’s mark is wholly and exactly incorporated in the disputed domain name. As such, the Complainant’s mark is clearly identifiable as such in the disputed domain name. The Complainant argued that “wellensteyn” has no meaning. The term appears to be relatively distinctive. It is therefore, in the view of the Panel, not a term that is likely to have associations other than with the Complainant’s mark. This increases the likelihood of confusion.
Secondly, the disputed domain name includes generic or descriptive terms (“jacken” and “outlet”). The term “jacken” generally describes the Complainant’s products. The term “outlet” describes a location for the sale of such products. The use of those terms, in conjunction with the Complainant’s mark, creates the obvious implication that the disputed domain name may be associated with the Complainant’s mark and the jackets which the Complainant sells using its mark. The creation of that implication is a strong basis for a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
This finding is not affected by the “.com” extension. It is well-established that such extensions are to be disregarded for the purpose of paragraph 4(a)(i). Also, the Panel does not consider it material that the term “jacken”, in German, is combined with the term “outlet”, in English. (The Complainant made no argument that the latter had an equivalent meaning in German). Both terms are common and the Panel considers that many Internet users would have no trouble understanding their combined meaning, and their obvious association with the Complainant. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argued that the Respondent has no rights or legitimate interests. The Complainant has established a prima facie case against the Respondent. The Respondent has made no response to that case against it. The nature of the bad faith which the Panel has found (described below) makes it inconceivable, to the Panel, that the Respondent could have rights or legitimate interests in the circumstances of this case. There is no other evidence in the case file that would suggest the Respondent has rights or legitimate interests. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel considers that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such conduct is a form of bad faith, described in paragraph 4(b)(iv) of the Policy.
The website to which the disputed domain name reverts has the superficial appearance of a website operated by the Complainant. While the Complainant did not provide direct evidence of whether, in fact, products can be purchased via this website, the website is clearly established with an intention for commercial gain. That website includes the Complainant’s mark and apparent pictures of the Respondent’s products. The website is in German. Germany is the location of one of the Complainant’s primary markets. The website operates under domain name which is confusingly similar to the Complainant’s mark. The whole appearance of the website at the disputed domain name seems directed to create the impression of a website operated by the Complainant. The Respondent also uses the Complainant’s trademark on the website. These facts clearly indicate that the Respondent was aware of the Complainant and its mark.
The Complainant has denied that the Respondent has any authorization or license from the Complainant to use its mark in this connection. There was no evidence that the disputed domain name has been used for any purpose other than in connection with the described website (as evidenced in the Complaint). The Panel has therefore inferred that the disputed domain name was registered, and is being used, for the purpose of the Respondent’s website.
In the Panel’s view, these circumstances suggest that the Respondent’s website is deliberately designed to create a false impression of being legitimately connected with the Complainant. An ordinary Internet user would have no reason to suspect otherwise. This strongly suggests that the Respondent registered, and is using the disputed domain name, to reinforce the misleading impression deliberately created by its website. Such activity is strongly demonstrative of bad faith. 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, , be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: December 12, 2012
Full & Egal Universal Law Academy