Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. of Idstein, Germany, represented by Harmsen.Utescher, Germany.
Respondent is duoduo qian of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2014. On February 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 18, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 18, 2014, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on February 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on April 15, 2014. 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
Complainant, Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA., is a company incorporated in Idstein, Germany. Complainant is a leading producer of outdoor and sporting apparel and equipment in Germany, Europe, America and Asia.
Complainant has exclusive rights in several registered JACK WOLFSKIN trademarks (hereafter the “JACK WOLFSKIN Marks”) globally, including German Trademark No. 1049490, registered on July 15, 1983, and International Trademark No. 629193, registered on November 4, 1994 covering China and Community Trademark No. 3034915, registered on February 7, 2005. (Annex 3 to the Complaint).
Respondent is duoduo qian of Fuzhou, Fujian, China. The disputed domain name was registered on December 4, 2013, long after the JACK WOLFSKIN Marks were registered. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant is a leading producer of outdoor and sporting apparel and equipment in Germany, Europe, America and Asia. For more than 25 years, Complainant has been dedicated to the production and sale of the aforementioned goods and has acquired an outstanding reputation for high-quality innovative products throughout the world.
The product portfolio of Complainant covers all kinds of outdoor equipment, especially clothing, footwear and headgear. All goods of Complainant are labeled with the trademark JACK WOLFSKIN.
Complainant has exclusive rights in several well-known registered JACK WOLFSKIN Marks globally, including German Trademark No. 1049490, registered on July 15, 1983, and International Trademark No. 629193, registered on November 4, 1994 covering China and Community Trademark No. 3034915, registered on February 7, 2005. (Annex 3 to the Complaint).
The disputed domain name is nearly identical to the JACK WOLFSKIN Marks in which Complainant owns exclusive rights. The additional elements “2014” (as a description for the year 2014) and “online” (as a description for an online shop) are obviously purely descriptive.
The disputed domain name is identical to the JACK WOLFSKIN Marks as far as the distinctive part
“jackwolfskin” is concerned.
Respondent uses the disputed domain name for the offer of identical products (e.g. clothing, footwear, headgear) as apparent from the homepage resolved by . Respondent uses also on the homepage the trademarks of Complainant, namely the trademark Jack Wolfskin and “Jack Wolfskin + paw device”. Respondent uses wordings such as “Jack Wolfskin outlet store, an official Jack Wolfskin Jackets retailer” (Annex 4 to the Complaint).
Respondent creates – obviously intentionally – the false impression that the website under “www.” is operated by Complainant or a person connected to Complainant as an official retailer of Complainant. Both are not the case.
Complainant has nothing to do with the website “www.” and/or the offer submitted on the disputed domain name.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is - to the best of Complainant’s knowledge - not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”.
There is no relationship between Respondent and Complainant. Respondent is not a licensee of Complainant nor has he otherwise obtained any authorization from Complainant to use the sign “Jack Wolfskin” or to register the disputed domain name incorporating Complainant’s trademarks.
Respondent has not registered the disputed domain name for a bona fide reason nor has he made any bona fide use of the disputed domain name.
Respondent uses for commercial purposes by way of advertising clothing articles, intentionally leading the consumers to the false impression that this web-shop is operated by Complainant.
(c) The disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered exclusively for the purpose of exploiting the reputation of Complainant and its trademarks and trade name “Jack Wolfskin”.
Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to his homepage under “www. ”, advertising clothing articles on this website and, thus, creating a likelihood of confusion with Complainant’s trademarks.
Respondent betrays the Internet consumers by way of pretending a not existing commercial connection to Complainant.
Thus, the disputed domain name was obviously registered and used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The disputed domain name is completely in English since it covers the English words “jack”, “wolfskin” and “online”. The disputed domain name has nothing to do with China or languages spoken in China.
(b) The content on the website to which the disputed domain name resolves (hereinafter the “Respondent’s Website”) is completely in English and not in Chinese. (Annex 4 to the Complaint). The content on the website resolved by disputed domain name indicates a familiarity on the part of Respondent with the English language.
(c) English is not the native language of Complainant either, who has its seat in Germany. Therefore, in order to ensure fairness to both parties, English as the world’s best known language is a reasonable and appropriate language of this administrative proceeding.
(d) Complainant is not able to communicate in Chinese.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“In certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from Germany, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the Respondent’s Website is in English and the disputed domain name includes the Latin characters and English words “jack”, “wolf” and “skin” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the Respondent’s Website is an English-based website and Respondent is apparently doing business in English through this website (Annex 4 to the Complaint); (c) the Respondent’s Website appears to have been directed to users around the world (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, 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. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the JACK WOLFSKIN Marks acquired through registration internationally. Complainant has a widespread reputation as a leading producer of outdoor and sporting apparel and equipment in Germany, Europe, America and Asia.
The disputed domain name comprises the JACK WOLFSKIN Marks in their entirety. The disputed domain name only differs from Complainant’s trademark by the suffixes of the number “2014” and the term “online” to the JACK WOLFSKIN Marks. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere additions of the number “2014” and the descriptive term “online” as suffixes to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Internet consumers may believe that the Respondent’s Website, which is resolved by the disputed domain name, is an online shop authorized or operated by Complainant.
Thus, the Panel finds that the additional suffixes are not sufficient to negate the confusing similarity between the disputed domain name and the JACK WOLFSKIN Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the JACK WOLFSKIN Marks globally, including German Trademark No. 1049490, registered on July 15, 1983, and International Trademark No. 629193, registered on November 4, 1994 covering China – which long precede Respondent’s registration of the disputed domain name (December 4, 2013).
Respondent is not an authorized dealer of JACK WOLFSKIN branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Jack Wolfskin” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the JACK WOLFSKIN Marks or to apply for or use any domain name incorporating the JACK WOLFSKIN Mark and Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the JACK WOLFSKIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the Respondent’s Website, potential partners and Internet users are led to believe that the Respondent’s Website “www.” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on December 4, 2013. The disputed domain name is confusingly similar to Complainant’s JACK WOLFSKIN Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported JACK WOLFSKIN branded products at the Respondent’s Website “www.”.
The Panel finds that Respondent has failed to produce any evidence to establish his 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
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the JACK WOLFSKIN Marks with regard to its products. Complainant has registered its JACK WOLFSKIN Marks internationally, including the International Trademark No. 629193, registered on November 4, 1994 covering China. Moreover, according to the information provided by Complainant, Respondent uses the disputed domain name for the offer of identical products (e.g. clothing, footwear, headgear) as apparent from the homepage resolved by >. Respondent uses also on the homepage the trademarks of Complainant, namely the trademark Jack Wolfskin and “Jack Wolfskin + paw device”. Respondent uses wordings such as “Jack Wolfskin outlet store, an official Jack Wolfskin Jackets retailer” (Annex 4 to the Complaint).
Respondent would not have advertised products purporting to be Jack Wolfskin products on the Respondent’s Website if it was unaware of Complainant’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the JACK WOLFSKIN Marks are not ones those traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s JACK WOLFSKIN Marks. b) Use in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website offering Complainant’s JACK WOLFSKINbranded products and services without authorization. Complainant claimed that Respondent intentionally attempted to attract for “commercial gain” by way of leading Internet consumers to his homepage under , advertising clothing articles on this website and, thus, creating a likelihood of confusion with Complainant’s trademarks.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the JACK WOLFSKIN Marks (as well as the affiliation statement on the Respondent’s Website - mentioned above), the Panel finds that Internet users are likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the JACK WOLFSKIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the Respondent’s Website, potential partners and Internet users are led to believe that the Respondent’s Website “www.” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Respondent’s Website is indicative of registration and use of 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 Complainant.
Yijun Tian
Sole Panelist
Dated: April 22, 2014
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