The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Beate Igantzy of Neuwied, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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.
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 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on December 5, 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 an outdoor clothing and sporting apparel company which has done business under the Jack Wolfskin name for over 25 years, whose goods are distributed and sold throughout Europe and Asia. The Complainant is also the owner of numerous registrations for its JACK WOLFSKIN mark, dating from 1982.
The disputed domain name was registered on August 8, 2012. According to the screen shots provided by the Complainant, the Respondent has used the disputed domain name to advertise and sell the Complainant’s Jack Wolfskin branded apparel and footwear, in addition to the products of the Complainant’s competitors (e.g. La Sportiva hiking shoes). Moreover, the website contains banner advertising for The North Face company, one of the Complainant’s competitors.
As of the writing of this decision, the disputed domain name no longer resolves, and a “504 Gateway Time-out” error message is received when accessed. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant provided evidence of its numerous trademark registrations for its JACK WOLFSKIN mark, and noted that the disputed domain name contains the entirety of the mark. It avers that the addition of the dictionary word “grosshandel,” meaning “wholesale,” does not distinguish the disputed domain name from its trademark.
Concerning the second element of the Policy, the Complainant confirms that it has not licensed or authorized the Respondent to use its trademark in any fashion, that the Respondent is not an authorized reseller of the Complainant’s goods, and that there is no connection between the parties. The Complainant states that there is no evidence the Respondent is commonly known by the name “Jack Wolfskin,” nor to indicate that the Respondent is making a noncommercial or fair use of the disputed domain name.
Finally, the Complainant states that the disputed domain name was registered and has been used in bad faith in order to exploit the JACK WOLFSKIN trademark for commercial gain, and that the Respondent has attempted to impersonate the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark and that the disputed domain name is identical or confusingly similar to said trademark. Here, the Complainant has provided evidence of its numerous registrations for the JACK WOLFSKIN mark, dating from as early as 1982. Accordingly, the Panel finds that the Complainant has demonstrated its rights for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin,WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The addition of a dictionary word or term which logically related a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774 and Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616. In this case, the descriptive term “grosshandel” in German meaning “wholesale”, has been appended to the Complainant’s registered JACK WOLFSKIN mark, which does nothing to distinguish the disputed domain name from the trademark. Likewise, the introduction of a dash symbol between the words “Jack” and “Wolfskin” does not dispel the risk of Internet user confusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s JACK WOLFSKIN trademark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its JACK WOLFSKIN mark in any fashion, that the Respondent is not an authorized licensee or reseller of the Complainant’s goods, and that there is no connection between the Respondent and the Complainant. Additionally, there is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. The website has been used to resell the Complainant’s goods, in addition to advertising and selling the products of the Complainant’s competitors, from which the Respondent presumably derives commercial revenue. Thus, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name. See R, Inc. v. Zimrat Goldstein,WIPO Case No. D2011-0455.
Previous panels have found that a reseller or distributor’s activities can constitute a bona fide offering of goods and services, and thus demonstrate a legitimate interest in a disputed domain name which includes a complainant’s trademark, if its use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903. These requirements, also known as the Oki Data test, are: (1) a respondent must actually be offering the goods or services at issue; (2) a respondent must use the website to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (3) the website must accurately disclose the registrant’s relationship with the trademark owner; and (4) a respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, the Respondent’s activities run afoul of both the second and third prongs of the Oki Data test. Although it appears that the Respondent may resell the Complainant’s goods on the website, it also offers and advertises the goods of the Complainant’s competitors. Moreover, the website not only fails to accurately disclose the relationship between the parties, but provides an affirmative misrepresentation in the copyright notice, where the Respondent states “Copyright © 2012 Jack Wolfskin Großhandel Powered by Jack Wolfskin.” Accordingly, the Respondent has attempted to mislead consumers, presenting its website as an authorized portal, and giving the impression that the Respondent is itself the Complainant or an authorized “wholesale” branch of the Complainant’s company.
The Respondent, in its turn, has provided no explanation for its actions in selecting a domain name containing the registered trademark of the Complainant, and using the website to sell the Complainant’s goods in an unauthorized manner (in addition to advertising and selling competing goods).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has demonstrated that its JACK WOLFSKIN mark has been registered for use in connection with its outdoor equipment and sporting apparel since 1982, roughly 30 years before the Respondent registered the disputed domain name. The disputed domain name contains the Complainant’s mark in its entirety, in conjunction with the non-distinctive dictionary word “grosshandel”. The Respondent has utilized the disputed domain name to sell the Complainant’s goods, in addition to the goods of the Complainant’s competitors. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its JACK WOLFSKIN mark when it selected the disputed domain name.
By registering the JACK WOLFSKIN mark as domain name, in connection with the German word for “wholesale,” and using the disputed domain name for a commercial sales portal, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Decathlon v. Tents Direct,WIPO Case No. D2010-0993.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Date: December 16, 2012
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