The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Ou Yang of Tianjin, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2016 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 June 20, 2016.
On June 17, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 20, 2016, 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 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceeding commenced on June 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on July 21, 2016. 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 leading producer of outdoor and sporting apparel and equipment in Germany, Europe, Asia and America. It asserts it has acquired an outstanding reputation for high-quality innovative products through over more than 25 years of business.
The Complainant’s products are all labeled with its trade mark JACK WOLFSKIN. The trade mark JACK WOLFSKIN has been registered, inter alia, in Germany and in the European Union. The Complainant also holds an International registration. The German trademark No. 1049490 dates from August 23, 1982.
The disputed domain name was registered on October 6, 2015. The disputed domain name resolves to a website where products bearing the JACK WOLFSKIN and JACK WOLFSKIN & Paw Device trade marks are offered for sale. 5. Parties’ Contentions A. Complainant
(1) The disputed domain name is nearly identical to the Complainant’s JACK WOLFSKIN trade mark. The elements “outlet” and “online” in the disputed domain name are purely descriptive in nature.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not entitled to any trade mark, trade name or any other right in the name Jack Wolfskin. There is no relationship between the Complainant and the Respondent. The Respondent is not a licensee of the Complainant nor has it otherwise authorized the Respondent to use the mark JACK WOLFSKIN or to register the disputed domain name. The 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. The use of the Complainant’s JACK WOLFSKIN trade mark by way of registering a nearly identical disputed domain name constitutes an infringement of the Complainant’s rights. The Respondent’s use of the disputed domain name for commercial purposes by advertising clothing articles, intentionally leading Internet consumers to form a false impression that the Respondent’s website is operated by the Complainant. A prima facie case has been established and therefore the Respondent has to demonstrate his rights or legitimate interests in the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. It is evident that the Respondent’s aim was to exploit the Complainant’s reputation and its trade mark JACK WOLFSKIN. The Respondent has intentionally attempted to attract, for commercial gain, by way of leading Internet consumers to his homepage and creating a likelihood of confusion with the Complainant’s trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant filed the Complaint in English but the language of the Registration Agreement is Chinese.
Paragraph 11(a) of the Rules stipulates that: “Unless 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 (c) of the Rules stipulate, inter alia, that:
“(b) In 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.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition.”
The Complainant requested that English be the applicable language of the proceeding as the disputed domain name comprises the English words “Jack”, “Wolfskin”, “outlet” and “online”. The disputed domain name has no connection with China or the Chinese language. The Respondent’s website to which the disputed domain name resolves is completely in English. The Complainant is not able to communicate in Chinese and since English is the world’s most widely-used language, it would be reasonable and appropriate for English to be the language of the administrative proceeding herein.
The Panel has considered the surrounding circumstances of this case and determines that it would indeed be appropriate for English to be the language of the proceeding. The Policy aim of ensuring that the administrative proceeding takes place with due expedition has to be upheld and in this regard, requiring the Complainant to translate the Complaint and the supporting documents into Chinese in this instance, would unnecessarily delay the proceeding. The Respondent has been given an opportunity to object to the request of the Complainant but has not responded on this issue nor in the proceeding. All communications from the Center have been sent in English and Chinese. The Panel is therefore of the view that the Respondent is not prejudiced by this determination. B. Identical or Confusingly Similar
The Complainant has shown it owns rights in the trade mark JACK WOLFSKIN. The question therefore to be addressed is whether the disputed domain name may be said to be identical or confusingly similar to the Complainant’s said trade mark. The Panel is of the view in this regard that the disputed domain name is confusingly similar to the trade mark JACK WOLFSKIN, but not identical.
The only difference between the trade mark and the disputed domain name is the addition of the words “outlet”, “online” and “.com” in the latter. The disputed domain name incorporates the Complainant’s trade mark at the very front and is the primary, distinctive portion. The Panel agrees that the phrase “outletonline” is purely descriptive in nature and reflects the nature and purpose of the Respondent’s website – an online sales outlet whereby Jack Wolfskin products (whether they be genuine or not) are sold or offered for sale. The addition of this phrase does not remove the confusing similarity with the Complainant’s JACK WOLFSKIN mark which is clearly identifiable in the disputed domain name. Further, it is a well-accepted principle that the generic Top-Level Domain “.com” may be disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trade mark.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s JACK WOLFSKIN trade mark.
Paragraph 4(a)(i) of the Policy has therefore been satisfied. C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
This prima facie case has not been rebutted by the Respondent with any evidence whatsoever. The Respondent is evidently well acquainted with the Complainant, its trade mark and product range. The Complainant’s mark has been used and registered long before the Respondent’s date of registration of the disputed domain name.
The Respondent has not shown that he has ever been known by the name “Jack Wolfskin”; it would in fact require a significant stretch of the imagination to accept that the registration of the disputed domain name and its close identity with the Complainant’s trade mark are pure coincidence.
The Respondent’s silence in this proceeding is a strong indication that he does not have a right or legitimate interest in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
The registration of the disputed domain name which incorporates the entire trade mark of the Complainant, JACK WOLFSKIN, the use of the disputed domain name for the purpose of selling allegedly Jack Wolfskin products, and the operation of the Respondent’s website bearing the Complainant’s trade mark (which appears to be for the intention of misrepresenting to members of the Internet public that the said website is the authentic or official website of the Complainant), constitute clear signs of bad faith registration and use. See paragraph 4(b)(iv) of the Policy:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the absence of any response from the Respondent, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has been 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.
Francine Tan
Sole Panelist
Date: June 26, 2016
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