The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Idstein/Taunus, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is bob rivera of Baton Rouge, Louisiana, United States of America. 2. The Domain Name and Registrar
The 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 January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “bob rivera” is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 29, 2013.
The Center verified that the Complaint together with the amended 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 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 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 Registration No. 1049490, JACK WOLFSKIN with a priority date of August 23, 1982;
- Community Trademark Registration No. 6733208, JACK WOLFSKIN with a priority date of March 6, 2008;
- International Trademark Registrations No. 629193 JACK WOLFSKIN and No. 643936 JACK WOLFSKIN, with a priority date in 1994/1995;
- Community Trademark Registration No. 3034915 “Jack Wolfskin + paw device” with a priority date of January 31, 2003.
The Domain Name was registered on November 2, 2012. On the day the Complaint was filed, the Domain Name resolved to a website offering for sale clothing and footwear under the JACK WOLFSKIN trademark. 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 Domain Name is nearly identical to its JACK WOLFSKIN trademark together only with the additional element “onlineshop” which is obviously purely descriptive for the service offered on the Domain Name. It submits that this is not sufficient to distinguish the Domain Name from the Complainant’s registered trademarks and that the Domain Name is therefore confusingly similar to the trademark JACK WOLFSKIN.
The Complainant maintains that there is no evidence that the Respondent has any rights or legitimate interests in the 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 mark 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 mark JACK WOLFSKIN or to register the Domain Name incorporating the Complainant’s trademarks. The Respondent has not registered the Domain Name for a bona fide reason or made any bona fide use of the Domain Name.
Additionally, the Complainant alleges that the Respondent uses the Domain Name for commercial purposes by way of operating a web-shop, intentionally leading Internet users into the false impression that the web-shop is operated by the Complainant.
The Complainant submits that the 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 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 © 2012 Jack Wolfskin Jackets Online” and “Powered by Jack Wolfskin” at the bottom of the home page of the website to which the Domain Name resolves intentionally creating the false impression that the website is operated by the Complainant or a person connected to the Complainant. However, it is well clear that 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 Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the 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 “onlineshop” does not detract from the distinctiveness of the Complainant’s mark. Since it is a description of a service offered by the Complainant, in the opinion of the Panel, it rather adds to the confusing similarity between the Domain Name and the Complainant’s mark.
Accordingly, the Panel is satisfied that the Complainant has established that the Domain Name is indeed confusingly similar to the Complainant’s registered trademark in accordance with paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The website to which the Domain Name resolves show a range of goods offered for sale under the JACK WOLFSKIN mark. Each one is described as the Complainant’s product, for example, some are described as “Jack Wolfskin Women Sleeping bags”. The webpage is headed with the mark JACK WOLFSKIN and feature also the paw element 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 making its true status clear, the home page of the website to which the Domain Name resolves includes the statements “Copyright © 2012 Jack Wolfskin Jackets Online” and “Powered by Jack Wolfskin”. 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 the Respondent has failed to produce any evidence to establish rights or legitimate interests in the 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 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 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. The Panel therefore finds that due to the absence of any rights or legitimate interests in respect of the Domain Name on the part of the Respondent, the Respondent registered and is using the Domain Name in bad faith.
The Panel therefore holds that the Complaint fulfills 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 Domain Name be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Date: March 11, 2013
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