The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Henrik Dirksmeier, Harmsen Utescher, Germany.
The Respondent is WhoisGuard of Los Angeles, California, United States of America (“US”) / Edison Pitt of Sussex, New Jersey, US. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 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 April 25, 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 amendment to the Complaint on April 29, 2013.
The Center verified that the Complaint together with the amendment to 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 April 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2013.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on May 30, 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 a producer of outdoor and sporting apparel and equipments in various countries. Its product portfolio covers outdoor equipment, such as clothing, footwear and headgear.
The Complainant is holder of various registered trademarks, such as:
- 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 Registration 673642 JACK WOLFSKIN with a priority of April 25, 1997;
- Community Trademark Registration 3034915 JACK WOLFSKIN + Design with a priority of January 31, 2003.
The Respondent registered the Domain Name on March 24, 2013. Under the Domain Name, the Respondent sells jackets and similar outdoor gear. 5. Parties’ Contentions A. Complainant
The Complainant is holder of various registered trademarks JACK WOLFSKIN and, respectively, JACK WOLFSKIN + Design”. The Complainant contends that the Domain Name is nearly identical to the trademarks which are protected on behalf of the Complainant. In particular, the Complainant argues that the additional element “jacke” (German for “jacket”) is purely descriptive for the goods distributed on the website associated with the Domain Name, i.e., inter alia, jackets. As a consequence, the Complainant holds that the Domain Name is even identical compared to the JACK WOLFSKIN trademarks as far as the distinctive part (i.e. “jackwolfskin”) is concerned.
Furthermore, the Complainant submits that the Respondent uses the Domain Name for the offer of identical products as the ones produced by the Complainant (e.g. clothing). The Complainant holds that by doing so, the Respondent intentionally creates the false impression that the website under the Domain Name is operated by the Complainant or a person connected to the Complainant, which is apparent from the prominent use of the trademarks JACK WOLFSKIN andJACK WOLFSKIN + Design directly on the top of the homepage as well as from the “copyright hint” at the bottom of the page, which reads as follows: “© 2013 JackW”.
The Complainant states that it has nothing to do with the website “www.”. Further, both the Domain Name as well as the offers submitted on the website associated to it, are confusingly similar to the trademarks of the Complainant.
In addition, the Complainant holds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant submits that the Respondent is not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”, and that there is no relationship between the Respondent and the Complainant. The Complainant holds that the Respondent is not a licensee of the Complainant and that the Respondent has also not otherwise obtained any authorization from the Complainant to use the sign “Jack Wolfskin” or to register the Domain Name incorporating the Complainant’s trademarks. Further, the Complainant holds that the Respondent has not registered the Domain Name for a bona fide reason, nor has the Respondent made any bona fide use of the Domain Name.
As a consequence, the Complainant holds that the use of the Complainant’s JACK WOLFSKIN trademarks by means of registering a nearly identical Domain Name constitutes an infringement of the Complainant’s rights. The Complainant holds that the Respondent is intentionally leading the consumers to the false impression that the web-shop, which is operated under the Domain Name for commercial purposes, is operated by the Complainant, which is not the case. As a consequence, the Complainant submits that the Respondent has no rights or legitimate interests with respect to the Domain Name.
Finally, the Complainant argues 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. Likewise, the Complainant submits that the Respondent intentionally attempts to attract for commercial gain by leading Internet consumers to the web-shop under the Domain Name, creating a likelihood of confusion with the Complainants trademarks, and that the Respondent also betrays the Internet consumers by way of pretending a commercial connection to the Complainant. For these reasons, the Complainant holds that the Domain Name was registered and used in bad faith.
In view of the above, the Complainant requests that pursuant to paragraph 4(i) of the Policy, the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; that
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and that
(iii) the Domain Name has been registered and is being used in bad faith.
In the present proceeding, the Respondent did not submit a response. In view of the Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding “on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.” (see Friedman & Feiger, LLP v. Whois Watchdog, NAF Claim No. 1319476; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). Besides, it has to be noted that the lack of response makes it difficult for the Panel to reasonably make findings differently from those convincingly argued by the Complainant (see Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493). Finally, by choosing not to submit a Response, the Respondent accepts that the Complainant’s statements of fact may be accepted at their face value by the Panel (see Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493). A. Identical or Confusingly Similar
It is undisputed that the Complainant is the owner of different trademarks containing the term “Jack Wolfskin”.
The Domain Name is not identical with the Complainant’s trademarks. Therefore, the question is whether it is confusingly similar to them.
The Domain Name incorporates the Complainant’s distinctive JACK WOLFSKIN trademarks in its entirety. The addition of the merely generic German term “jacke” - which, in addition, gives a strong association to the Complainant’s business activity and products - cannot be deemed sufficient to avoid confusion between the Domain Name and the Complainant’s trademarks (see GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; see also Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistic Corp.,WIPO Case No. D2000-0464: “The use of […] a generic word is an irrelevant distinction, which does not change the likelihood for confusion.”; Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477: “The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.”). Quite to the contrary, an addition as the one at hand creates an even bigger confusion for the public, which is likely to assume that under the Domain Name, products of the Complainant are being sold, since the addition of the generic German term “jacke” makes reference to products of the kinds as, inter alia, exactly sold by the Complainant (i.e. jackets and the like).
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
From the evidence in front of the Panel, the Respondent’s name is not “Jack Wolfskin” or “Jack Wolfskin Jacke”. There is no evidence that the Respondent was commonly known by the Domain Name prior to its registration or that after registration of the Domain Name, it has legitimately become known by the Domain Name for reasons beyond its simple use. The Respondent also does not possess any apparent rights in or to the JACK WOLFSKIN trademarks, and the Domain Name was registered only after the Complainant had used its trademarks for several years.
The Complainant has provided with its Complaint a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name, in particular that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the Domain Name. Therefore, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630). Since, in the present proceedings, the Respondent has failed to submit a Response - a fact that also speaks for a nonexistence of any right or legitimate interest with respect to the Domain Name (see Spenco Medical Corporation v. Transure Enterprise Ltd,WIPO Case No. D2009-1765; Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630; see also Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493: “the Respondent’s failure can be used by the Panel to draw such inferences as it considers appropriate based on the Complaint.”) - the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
For completeness, the Panel also notes that on the website of the Respondent, in the section entitled “Über uns” (“about us”), it is stated that “ ist offizieller Händler für alle Jackenmarken auf dieser Website aufgeführt” (“ is an official reseller for all jacket trademarks listed on this website”), which is clearly denied in the Complaint (cf. Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630).
For all these reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
When assessing bad faith in the registration requirement, it must be considered (1) whether the Respondent knew or should have known of the Complainant and its trademarks (see Janet E. Sidewater v. Worldwide Media Inc.,WIPO Case No. D2006-1281), and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the Domain Name and the trademarks of the Complainant (see Align Technology Inc. v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103).
The Domain Name was registered after the Complainant had established the rights in the JACK WOLFSKIN trademarks for jackets, outdoor gear and similar products. Given the use that the Complainant has made of the JACK WOLFSKIN trademarks and the resulting reputation which it has acquired for products like jackets, outdoor gear and the like, and in view of the fact that the Respondent is using the Domain Name to advertise similar products as the Complainant, the Panel is convinced that the Respondent must have known the JACK WOLFSKIN trademarks at the time it registered the Domain Name. This is confirmed by the fact that the Respondent uses the combination “Jack Wolfskin” and a description of the products sold by the Complainant in the same way that the Complainant does so itself. In addition, the Respondent’s website displays pictures of goods which appear to be original products of the Complainant.
It is thus demonstrated that by using the Domain Name, the Respondent has - by taking advantage of the reputation of the Complainant’s trademark - intentionally attempted to attract potential buyers for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks.
This use of the Domain Name has, or has potentially, diverted sales which the Complainant would or may have made through its websites to one of the Complainant’s competitors. Although certain Internet users may realize that the Respondent’s website is not their intended destination, some visitors will still click on the competitor advertising on the website rather than navigate away from it. It is therefore demonstrated that the Respondent has deliberately set out to create confusion by registering and using the Domain Name in bad faith.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(iii) of the Policy is established. 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.
Michael A.R. Bernasconi
Sole Panelist
Date: June 13, 2013
Full & Egal Universal Law Academy