The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. of Idstein/Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Yu Liu / Liu Yu of Shanghai, 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 in English with the WIPO Arbitration and Mediation Center (the "Center") on September 6, 2016. On the same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The following day 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. On September 9, 2016, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On September 12, 2016, the Complainant filed the amended Complaint.
On September 9, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On September 12, 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.
The Center verified that 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 amended Complaint, and the proceeding commenced on September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 11, 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 produces and sells outdoor and sporting apparel and equipment in Europe, America and Asia. The Complainant owns multiple trademark registrations in multiple jurisdictions including German trademark registration No. 1049490 for JACK WOLFSKIN, registered in 1983; European Union trademark registration No. 6733208 for JACK WOLFSKIN registered in 2009; International registrations Nos. 629193 and 643936 for JACK WOLFSKIN, registered in 1994 and 1995, respectively, both designating multiple jurisdictions including China; and European Union trademark registration No. 3034915 for JACK WOLFSKIN and device registered in 2005. These registrations specify goods and services including clothing and footwear in class 25 and retail services in class 35.
The Respondent is an individual located in China. The disputed domain name was registered on June 16, 2016. The disputed domain name resolves to a website that displays the JACK WOLFSKIN trademark and logo and offers for sale what is alleged to be the Complainant's outdoor equipment, clothing and footwear.
The disputed domain name was registered two days after a complaint was filed during a previous UDRP proceeding against a different respondent regarding the nearly identical domain name . See Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Ou Yang / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), WIPO Case No. D2016-1206. The panel in that previous proceeding ordered that that domain name be transferred to the Complainant. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's trademarks. The disputed domain name is almost identical to the trademarks. The addition elements "outlet" and "onlines" are purely descriptive.
The Respondent has no rights or legitimate interests in the disputed domain name. To the best of the Complainant's knowledge, the Respondent is not entitled to any trademark, trade name or any other right in the sign "Jack Wolfskin". There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorization from the Complainant to use or register the sign "Jack Wolfskin". The Respondent uses the disputed domain name intentionally to mislead consumers by giving the false impression that his online store is operated by the Complainant.
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 the Complainant and its trademarks. The Respondent intentionally attempts to attract Internet consumers to his website for commercial gain, advertising clothing articles on his website and, thus, creating a likelihood of confusion with the Complainant's trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides 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." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name itself, and the website to which the disputed domain name resolves, are entirely in English, and that the Complainant is not able to communicate in Chinese.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have noted that the choice of the language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is entirely in English, from which it is reasonable to infer that the Respondent understands that language. Moreover, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2. Analysis and Findings
The Respondent's failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the JACK WOLFSKIN trademark.
The disputed domain name incorporates the Complainant's trademark as its initial element, omitting only the space between the words "jack" and "wolfskin". This omission can be disregarded in a comparison with the Complainant's trademark as domain names do not include spaces for technical reasons.
There are several additional elements in the disputed domain name. Two are the dictionary words "outlet" and "online". A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. Another additional element is the letter "s" but this element is too minor to dispel confusing similarity. Nor does the combination of these two dictionary words and the letter "s" alter the result. The other additional element is the generic Top-Level Domain ("gTLD") suffix ".com". A gTLD suffix generally has no capacity to dispel confusing similarity with a trademark either. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Consequently, the Complainant's trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the 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 Panel has already found that the disputed domain name is confusingly similar to the Complainant's JACK WOLFSKIN trademark. The Complainant informs the Panel that the Respondent's use and registration of the disputed domain name was not authorized by the Complainant.
As regards the first circumstance above, the disputed domain name is being used with a website that offers for sale what are alleged to be the Complainant's products. Even if the products are genuine, the website does not accurately disclose the Respondent's lack of any relationship to the Complainant. These facts indicate that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Yu Liu" or "Liu Yu" not "jackwolfskinoutletonlines" or even "Jack Wolfskin". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] website or location or of a product or service on [the Respondent's] website or location."
The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant's JACK WOLFSKIN trademark. The website with which the disputed domain name is used displays the Complainant's JACK WOLFSKIN trademark and logo and offers for sale what are alleged to be the Complainant's products. This all indicates to the Panel that the Respondent was aware of the Complainant and its JACK WOLFSKIN trademark at the time that he registered the disputed domain name and chose to register it as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's JACK WOLFSKIN trademark, in connection with a website to offer for sale what are alleged to be the Complainant's products. Given this circumstance and those described in Section 6.2.B. above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 the Complainant.
Matthew Kennedy
Sole Panelist
Date: October 17, 2016
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