The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Idstein, Taunus, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is Thomas Georgina of Maidenhead Berkshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names (the “Domain Names”) , , , and are registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2012. On November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrants and providing the contact details. On November 2, 2012, the Center sent an email communication to the parties, both Chinese and English, regarding the language of the proceedings. On the same day, the Complainant requested English be the language of the proceedings. The Respondent did not make any submissions with respect to the language of the proceedings.
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 Jacob (Changjie) Chen as the sole panelist in this matter on December 4, 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 a German company specializing in production of outdoor and sporting apparel and equipment for more than 25 years. The Complainant’s products cover all kinds of outdoor equipment, especially clothing, footwear and headgear, all with the trademark JACK WOLFSKIN.
The Complainant is the owner of numerous registrations of the trademark JACK WOLFSKIN, inter alia, German trademark registration No. 1049490 with a priority of August 23, 1982, Community trademark registration No. 6733208 with a priority of March 6, 2008, and International trademark registration No. 629193 and No. 643936 territorially extended to China with a priority of 1994/1995. The Complainant also registered Community trademark registration No. 3034915 JACK WOLFSKIN + paw device with a priority of January 31, 2003. Registrations of all these trademarks predate those of the Domain Names.
The Domain Names were registered by the Respondent on September 22, 2012. The Domain Names resolve to websites featuring the trademark JACK WOLFSKIN and offering products with the trademark JACK WOLFSKIN. 5. Language of the Proceedings
Under paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the Panel determines otherwise.
The Complainant initially filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Domain Names are completely English since all the Domain Names cover the English words “Jack” and “Wolfskin” and the Domain Names have nothing to do with China or languages spoken in China;
(b) the content on the websites under the Domain Names (the “Websites”) is completely in English, indicating a familiarity on the part of the Respondent with the English language;
(c) 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 of the Complainant but the native language of the Respondent who has its seat in the United Kingdom.
As confirmed by the Registrar, the language of the Registration Agreements is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Respondent is located in the United Kingdom as confirmed by the Registrar, which suggests a likely possibility that the Respondent understands the English language. The Panel notes that the Websites display their contents, basically and preferentially, in English, also in other 14 languages, such as Italian, Japanese and Russian; however, in no way there is a version with the content in Chinese. The Panel finds it is properly concluded that the Respondent is familiar with the English language and it is fair to take English as language of the proceedings as requested by the Complainant.
The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the JACK WOLFSKIN trademark of the Complainant. Full incorporation of the JACK WOLFSKIN trademark in the Domain Names is sufficient to establish that the Domain Names are identical or confusingly similar to the trademarks of the Complainant, and the additional elements such as “am”, “my”, “of”, “i” and “x” as the prefixes of the Domain Names are obviously not able to create a sufficient distance. The Respondent uses the Domain Names to offer products identical to those of the Complainant and uses the Complainant’s trademarks on the Websites as well.
The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the Domain Names. The Respondent is not licensed or authorized by the Complainant to use any trademark, trade name or any other right in the name “Jack Wolfskin”. The Respondent has not registered the Domain Names for a bona fide reason nor has he made any bona fide use of the Domain Names. The Respondent uses the Domain Names for commercial purpose, intentionally leading the consumers to the false impression that the Websites are operated by the Complainant.
The Complainant finally contends that the Domain Names were registered and are being used in bad faith. The Domain Names were registered exclusively for the purpose of exploiting the reputation of the Complainant and its trademark, intentionally attempting to attract for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Moreover, the Respondent betrays the Internet consumers by pretending a not existing commercial connection to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel agrees that the Complainant has adduced evidence to prove its right in trademark JACK WOLFSKIN, inter alia, German trademark registration No. 1049490 with a priority of August 23, 1982, Community trademark registration No. 6733208 with a priority of March 6, 2008, and International trademark registration No. 629193 and No. 643936 territorially extended to China with a priority of 1994/1995. The Complainant also registered Community trademark registration No. 3034915 JACK WOLFSKIN + paw device with a priority of January 31, 2003.
Meanwhile, the Panel notes that the Domain Names all incorporate the JACK WOLFSKIN trademark in their entirety. In line with established practice, incorporation of the Complainant’s distinctive trademark in their entirety into the Domain Names is sufficient to establish that the Domain Names are identical or confusingly similar to the Complainant’s trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 and Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289. Addition of generic terms “am”, “my”, “of”, “i” and “x” as prefixes to the Domain Names fails to distinguish the Domain Names from the Complainant’s trademark, also as having been established by previous UDRP decisions. See Wal-Mart Stores, Inc vs. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As contended by the Complainant, the Respondent is in no way connected to the Complainant, nor has he been entitled, licensed or authorized to use the JACK WOLFSKIN trademark. The Respondent has been commonly known by the Domain Names neither. The Panel notes that the Websites seem to be used to offer for sale identical products with JACK WOLFSKIN trademark as held by the Complainant but without any disclosure of the relationship between the Respondent and the Complainant, which precludes a bona fide use of the Domain Names.
The Panel is satisfied that the Complainant has established a prima facie case, and the burden of production shifts to the Respondent accordingly, whose failure to respond however enables the Panel to conclude that there is no evidence with respect to the Respondent’s rights and legitimate interests in the Domain Names.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) or circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Panel views that the actual knowledge of the Complainant by the Respondent at the time of registrations of the Domain Names is demonstrated by the fact that he registered the five Domain Names confusingly similar to the Complainant’s JACK WOLFSKIN trademark on the same day and directed the Domain Names to the Websites where the Complainant’s JACK WOLFSKIN and JACK WOLFSKIN + paw device trademarks feature prominently and products identical to those of the Complainant and bearing the Complainant’s JACK WOLFSKIN trademark are sold. The Panel thus holds that the Domain Names were registered by the Respondent in bad faith.
It is also the Panel’s finding that the Domain Names are being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. With very well knowledge of the Complainant and its JACK WOLFSKIN trademark at registration of the Domain Names, the Respondent built the Websites to distribute products which are similar to the Complainant’s products. The Respondent should have specified in the Websites its relationship with the Complainant, failure of which creates a likelihood of confusion with the Complainant’s JACK WOLFSKIN trademark as to the source, sponsorship, affiliation or endorsement of the Websites and the products sold thereon.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , and be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: December 26, 2012
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