The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is firstshoppingsell, Julie Julie of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2013, 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 January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2013.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 25, 2013. 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 one of the leading producers of outdoor and sporting apparel and equipment in Germany, America, Europe and Asia, especially clothing, footwear and headgear. It has produced and sold such goods for more than 25 years under the trademark JACK WOLFSKIN.
The Complainant is the owner of numerous trademark registrations for the term “Jack Wolfskin”, including:
- German Trademark 1049490 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, with a priority of 1994/1995,
- Community Trademark Registration 3034915 JACK WOLFSKIN + PAW DEVICE with a priority of January 31, 2003.
The disputed domain name was registered on April 30, 2012. At the date of the Complaint, it resolved to a website offering for sale clothing, footwear, tents, sleeping bags and backpacks under the JACK WOLFSKIN trademarks. 5. Parties’ Contentions A. Complainant
A summary of the factual and legal contentions on the part of the Complainant is as follows.
The Complainant asserts that the disputed domain name is nearly identical to its JACK WOLFSKIN trademark together only with the additional element "jackets" which is obviously purely descriptive for the goods distributed on the disputed domain name. It submits that this is not sufficient to distinguish the disputed domain name from the Complainant's registered trademarks and that the disputed domain name is therefore confusingly similar to the trademark JACK WOLFSKIN.
The Complainant maintains that there is no evidence that the Respondent has any right or legitimate interest in the disputed domain name. The Respondent is to the best of the Complainant’s knowledge, not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant and has not otherwise obtained any authorization from the Complainant to use the sign “Jack Wolfskin” or to register the disputed domain name incorporating the Complainant’s trademarks. The Respondent has not registered the disputed domain name for a bona fide reason or made any bona fide use of the disputed domain name.
In addition, the Complainant alleges that the Respondent uses 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.
The Complainant submits that the disputed domain name was registered exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks and trade name JACK WOLFSKIN. Therefore, the disputed domain name was registered and is being used in bad faith. The Respondent intentionally attempts to attract for commercial gain by leading Internet users to its web-shop, selling clothing on the website, thus creating a likelihood of confusion with the Complainant’s trademarks. Moreover, the Respondent uses the wording “Copyright © 2013 Jack Wolfskin Jackets” and “Official Jack Wolfskin Jackets Outlet Store” at the bottom of the home page of the website intentionally creating the false impression that the website is operated by the Complainant or a person connected to the Complainant. This is not the case. The Complainant has nothing to do with the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name the Complainant must prove 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 in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The addition of the word “jackets” does not detract from the distinctiveness of the Complainant’s mark. Since it is a description both of the goods of the Complainant and of the goods offered for sale on the website to which the disputed domain name resolves, in the opinion of the Panel, it rather adds to the confusing similarity between the disputed domain name and the Complainant’s mark.
Accordingly, the Panel is satisfied that the Complainant has established that the disputed domain name is indeed confusingly similar to the Complainant’s registered trademark in accordance with paragraph 4(a) of the UDRP Policy. B. Rights or Legitimate Interests
The pages of the website to which the disputed domain name resolves, annexed to the Complaint, show a range of goods offered for sale under the JACK WOLFSKIN mark. Each one is described, for example, as “Jack Wolfskin Women Sleeping bags”. The pages are headed with the mark JACK WOLFSKIN and feature also the paw elements of the Complainant’s device mark.
The Panel finds that the operator of the website may be acting as a reseller of genuine goods of the Complainant.
As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) records, the consensus view amongst panelists is that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements. However, these requirements normally include not only the actual offering of goods and services at issue and the use of the website to sell only the trademarked goods, but also that the website accurately and prominently discloses the registrant's relationship with the trademark holder.
In this case, rather than make its true status clear, the home page of the website includes the statements “Copyright © 2013 Jack Wolfskin Jackets” and “Official Jack Wolfskin Jackets Outlet Store”.
The Complainant asserts categorically that there is no relationship between the Respondent and the Complainant and that the Complainant has no connection with the website or its offering.
Accordingly, the Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed 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
The Respondent is using the disputed domain name for a website offering for sale jackets and other garments under the JACK WOLFSKIN mark. In the view of the Panel, it is well clear that the Respondent has registered the disputed domain name for the purpose of exploiting the reputation of the Complainant and its trademark by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the website. See paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Respondent registered and is using the disputed 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 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, as requested.
Eduardo Machado
Sole Panelist
Date: March 11, 2013
Full & Egal Universal Law Academy