The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Li Ning of Alabama, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2014. On April 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2014 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.
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 April 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2014.
The Center appointed Masato Dogauchi as the sole panelist in this matter on May 20, 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
Whereas the Respondent has not submitted any contentions, the following are found to be the factual background of this case.
The Complainant is a producer of outdoor and sporting apparel and equipment in Europe, America and Asia. For more than 25 years, the Complainant has been dedicated to production and sale of the aforementioned goods. The product portfolio of the Complainant covers all kinds of outdoor equipment, especially clothing, footwear and headgear. All goods of the Complainant are labeled with the trademark JACK WOLFSKIN.
According to the WhoIs database, the Respondent is an individual located in the United States of America.
The disputed domain name was registered on February 26, 2014. 5. Parties' Contentions A. Complainant
The Complainant asserts as follows:
For more than 25 years, the Complainant has been dedicated to production and sale of all kinds of outdoor equipment, especially clothing, footwear and headgear. The Complainant, as a leading producer in this field, has acquired an outstanding reputation for high-quality innovative products in Germany, Europe and many other countries throughout the world.
The Complainant is the owner of numerous trademark registrations for the term "Jack Wolfskin". The followings are examples of such trademark:
- German Trademark 1049490 JACK WOLFSKIN with a priority of 23 August 1982;
- Community Trademark Registration 6733208 JACK WOLFSKIN with a priority of 06 March 2008,
- International Registrations 629193 JACK WOLFSKIN and 643936 JACK WOLFSKIN, with a priority of1994/1995;
- Community Trademark Registration 3034915 JACK WOLFSKIN with design, with a priority of 31 January 2003.
These trademarks are inter alia registered for "clothing, footwear and headgear".
The disputed domain name, is nearly identical compared to the aforementioned trademarks in which the Complainant owns exclusive rights. The additional elements "shop" and "jp" are obviously purely descriptive ("jp" is a short form for Japan). Thus, the disputed domain name is identical to the trademark JACK WOLFSKIN as far as the distinctive part is concerned.
Furthermore, the Respondent uses the disputed domain name to offer "clothing, footwear, headgear" as apparent from the homepage of the disputed domain name.
The Respondent, thus, creates - obviously intentionally - the false impression that the website at the disputed domain name is operated by the Complainant or a person connected to the Complainant. The Complainant has nothing to do with the website under the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any submission in this case, this decision is rendered on the basis of the facts found by the submission from the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is found that the Complainant has had rights in the JACK WOLFSKIN trademark for more than 25 years.
As the Complainant asserts, the disputed domain name, can be divided into three parts: "jackwolfskin", "shop" and "jp". The first part is the distinctive portion of the domain name and s identical to the Complainant's JACK WOLFSKIN trademark. The second part "shop" is just a generic term. The third part "jp" is generally known as the abbreviation of Japan.
Accordingly, the second and the third part of the disputed domain name cannot be considered as sufficient to distinguish the disputed domain names from the Complainant's trademark. The terms "shop" and "jp" are apt to induce confusion among Internet users as to the source and origin of the Complainant's products.
Having considered these terms, the Panel finds that the disputed domain name is confusingly similar to the JACK WOLFSKIN trademark in which the Complainant has rights. Policy, paragraph 4(a)(i) is accordingly satisfied. B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. There is no relationship or association between the Respondent and the Complainant. The Respondent is not commonly known by the disputed domain name, and the Complainant has not authorized the Respondent to use JACK WOLFSKIN or to register the disputed domain name. The Respondent uses the disputed domain name to provide unauthorized sale of the Complainant's products or counterfeit products of the Complainant in Japanese. Such use does not give rise to any rights or legitimate interests in the disputed domain name.
The Respondent has not come forward to refute the Complainant's prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Policy, paragraph 4(a)(ii) is accordingly satisfied. C. Registered and Used in Bad Faith
According to the Registrar, the Respondent registered the disputed domain name on February 26, 2014, which was long after the Complainant established its rights in and to the trademark.
Given that the Respondent offers an unauthorized sale of the Complainant's products or counterfeit products at the website linked to the disputed domain name it is highly unlikely that the Respondent would not have known of the Complainant and the Complainant's legal rights in the JACK WOLFSKIN trademark at the time of the disputed domain name registration.
Further, it is apparent to the Panel that the Respondent uses the disputed domain name in order to mislead the public into believing that the Respondent's business is associated with the Complainant, which is not true. Such behavior falls under paragraph 4(b)(iv) of the Policy and constitutes evidence of registration and use in bad faith..
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. Policy, paragraph (4)(a)(iii) is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be satisfied. 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.
Masato Dogauchi
Sole Panelist
Date: June 7, 2014
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