The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Idstein/Taunus, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is Huang Feng Hua/Feng Hua Huang of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 22, 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.
On September 23, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent default on October 21, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 31, 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, Europe and Asia. The product portfolio of the Complainant covers all kinds of outdoor equipment, especially clothing, footwear and headgear. The Complainant’s goods are labeled with the JACK WOLFSKIN trademark. The JACK WOLFSKIN trademark has been registered in many countries, inter alia:
- JACK WOLFSKIN, International trademark, No. 629193, registered on November 4, 1994, protected in China.
- JACK WOLFSKIN + PAW DEVICE, Community trademark, No. 3034915, registered on February 7, 2005.
According to WhoIs data, the Respondent is Huang Feng Hua a.k.a. Feng Hua Huang. The Disputed Domain Name was registered on August 16, 2013.
The Registrar confirmed, in its email of September 22, 2013, that the Registration Agreement for the Disputed Domain Name is in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name includes the Complainant’s JACK WOLFSKIN trademark in its entirety with additional elements “jackets” and “outlet”, which are descriptive words and not able to create a sufficient distinction between the Disputed Domain Name and the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent is not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”. The Respondent is not licensed or authorized by the Complainant to use the Complainant’s JACK WOLFSKIN trademark in any form. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent uses the Dispute Domain Name for the commercial purpose of selling counterfeit goods labeled with the Complainant’s trademark.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant’s JACK WOLFSKIN trademark. The Respondent uses the Disputed Domain Name to sell counterfeit goods labeled with the Complainant’s trademark. The Respondent also pretends a not existing commercial connection to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 10(b) and 10(c) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case; [t]he Panel shall ensure that the administrative proceeding takes place with due expedition […].”
The Registration Agreement is in Chinese. The Complainant requested that the language of the proceeding be English. The Panel notes that the Respondent conducts its business at the website under the Disputed Domain Name in English. The Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. Therefore, it will not be prejudicial to the Respondent in its abilities to articulate its arguments in English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali,WIPO Case No. D2013-1101).
In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant is the owner of the JACK WOLFSKIN and JACK WOLFSKIN + PAW DEVICE trademarks. The Disputed Domain Name contains the distinctive portions of the JACK WOLFSKIN trademark in its entirety, with additional generic words “jackets”, “outlet” and the top-level suffix “.com”. The JACK WOLFSKIN element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of other descriptive and generic terms does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126).
The top-level suffix such “.com” is not distinctive, as it only indicates that the Disputed Domain Name is registered under this gTLD. (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598). Thus, this does not distinguish the Disputed Domain Name from the trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant is the owner of the JACK WOLFSKIN trademark. The Complainant also confirms that the Respondent is not licensed or authorized by the Complainant to use its JACK WOLFSKIN trademark in any form. The Respondent uses the Disputed Domain Name to sell jackets and thus not for legitimate noncommercial use as paragraph 4(c)(iii) of the Policy provides.
According to the WhoIs database, the name of the Respondent has no connection to JACK WOLFSKIN trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “Jack Wolfskin”. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not provide any allegation or evidence indicating its rights or legitimate interests in the Disputed Domain Name as demonstrated in paragraph 4(c) of the Policy.
On the website to which the Disputed Domain Name resolved, the Respondent claims it is an official Jack Wolfskin jacket retailer. The Complainant asserts that the Respondent is not entitled to any rights in the JACK WOLFSKIN trademark. The Respondent does not produce any evidence establishing that it is an authorized or authentic retailer of the Complainant’s goods nor rebut the Complainant’s contention that the goods sold on the website are counterfeit. Upon the preponderance of evidence principal, the Panel cannot find that the Respondent is an official jacket retailer of the Complainant merely on the basis of an unsubstantiated claim made on the website to which the Disputed Domain Name resolves (paragraph 4.7 of WIPO Overview 2.0). Therefore, the Panel cannot find that the Respondent has rights or legitimate interests in the Disputed Domain Name.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the disputed] domain name has been registered and is being used in bad faith.”
The Complainant’s JACK WOLFSKIN trademark has been registered and protected in many countries in the world including China. The Respondent chose the JACK WOLFSKIN trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the website under the Disputed Domain Name, the Respondent uses the Disputed Domain Name to sell jackets labeled with the JACK WOLFSKIN and the JACK WOLFSKIN + PAW DEVICE trademarks of the Complainant. It is obvious that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s trademarks to exploit the reputation of the JACK WOLFSKIN trademark. Therefore, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
The Respondent uses the JACK WOLFSKIN and JACK WOLFSKIN + PAW DEVICE trademarks on its website under the Disputed Domain Name to sell jackets and claims to be an official retailer of the Complainant. It is clear that the Respondent attempts to make the website appear to be an authorized retailer’s web site endorsed by the Complainant. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as paragraph 4(b)(iv) of the Policy provides. The Disputed Domain Name being currently inactive does not change this fact. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of 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 Disputed Domain Name be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: November 14, 2013
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