The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Idstein/ Taunus, Germany, represented by Harmsen Utescher Rechtsanwalts- und Patentanwaltspartnerschaft, Germany.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Mike Willer of feroao, aoeoog, Burundi. 2. The Domain Name and Registrar
The disputed domain name ("the 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 March 12, 2013. On March 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 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 March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 16, 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 has produced outdoor and sporting apparel for more than 25 years with the trademark JACK WOLFSKIN. It is the owner of a German registration for JACK WOLFSKIN for clothing, footwear and headgear going back to 1982 and subsequent Community registrations for the JACK WOLFSKIN word and logo mark and an International registration covering China for the word mark in the same class for clothing.
The Domain Name was registered in July 2012, and is selling clothing on a website which uses the Complainant's word mark in its logo form on the top left hand of the site in a prominent position as a header. 5. Parties’ Contentions A. Complainant
The Complainant's submissions can be summarised as follows:
The Complainant has produced outdoor and sporting apparel for more than 25 years with the trademark JACK WOLFSKIN. It is the owner of a German registration for JACK WOLFSKIN for clothing, footwear and headgear going back to 1982 and subsequent Community registrations for the JACK WOLFSKIN word and logo mark and an International registration covering China for the word mark in the same class for clothing.
The Domain Name is nearly identical to the JACK WOLFSKIN marks in which the Complainant owns exclusive rights. The additional element "cn" is descriptive indicating the “.cn” country code top level domain (“ccTLD”) for China. Its distinctive part is therefore identical to and the Domain Name fully incorporates the Complainant’s trade mark.
The Respondent offers clothing, footwear and headgear from the site attached to the Domain Name and uses the trade marks of the Complainant, the word mark and its logo as registered. The Respondent, therefore, creates intentionally the false impression that the website is operated by the Complainant or someone connected to the Complainant which is not the case.
The Respondent is not entitled to use any trade mark, trade name or any other right in the name JACK WOLFSKIN and has no authorisation from the Complainant to use the mark or register the Domain Name. No bona fide use has been made of the mark. It is used for misleading commercial purposes. The Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered to exploit the reputation of the Complainant and its trade marks JACK WOLFSKIN. It was registered and used in bad faith. The Respondent intentionally attempted to attract for commercial gain Internet consumers to his web page using the Domain Name and offering clothing on the site in circumstances likely to cause confusion by suggesting a non-existent commercial connection to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, 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 and is being used in bad faith. A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of or containing the JACK WOLFSKIN going back to 1982 and has an international registration for its word mark covering China. The Domain Name is confusingly similar to the Complainant's trade mark consisting of the Complainant's JACK WOLFSKIN registered trademark and the generic text “cn", indicating the “.cn” ccTLD indicating China. The distinctive part of the Domain Name is the JACK WOLFSKIN name. The addition of the non-distinctive text “cn", as such, does nothing to prevent the confusing similarity of the Domain Name with the Complainant's JACK WOLFSKIN trade mark, Accordingly, the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given the confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is it making non-commercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted 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, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant's trade mark with only a geographical indication added. Further, in the opinion of the Panel the use made of the Domain Name is deceptive. It is not at all clear whether the site to which it points is or is not connected with the Complainant. As such the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainant. The use of the trade marks on the site shows that the Respondent is well aware of the Complainant, its trade marks and goods. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb 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.
Dawn Osborne
Sole Panelist
Date: April 22, 2013
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