The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Idstein, Germany, represented by Harmsen Utescher, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard Inc. of Panama City, Panama / Mehmet Demir of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same 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. The Center sent an
e-mail communication to the Complainant on January 16, 2018 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 January 17, 2018.
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 of the Complaint, and the proceedings commenced on January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2018.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on February 22, 2018. 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, the Americas and Asia. For more than 25 years, the Complainant has been dedicated to the production and sale of the aforementioned goods and has, thus, acquired an outstanding reputation for high-quality innovative products in Germany, Europe, Turkey and many other states throughout the world. 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.
The Complainant is the owner of several trademark registrations for JACK WOLFSKIN, including:
- German trademark no. 1049490 JACK WOLFSKIN, registered on June 8, 1983; with a priority of August 23, 1982,
- European Union trademark no. 6733208 JACK WOLFSKIN, registered on May 20, 2009; with a priority of March 6, 2008,
- International trademark no. 629193 JACK WOLFSKIN, registered on November 4, 1994,
- European Union trademark no. 3034915 “JACK WOLFSKIN + paw device” registered on January 31, 2003.
- Turkish trademark no. 161363 JACK WOLFSKIN registered on December 13, 1995,
- Turkish trademark no. 2007 55829 JACK WOLFSKIN registered on January 14, 2009,
together hereafter referred to as the “JACK WOLFSKIN trademark” or the “Complainant’s trademark”.
The disputed domain name was registered on October 18, 2017. The Panel visited the disputed domain name on February 26, 2018 and observed that the disputed domain name is used in connection with a Turkish-language website which features the Complainant’s trademark and Bear Paw device and appears to offer for sale clothing and other outerwear accessories that are either the Complainant’s products or counterfeit products. Additionally, the Respondent uses the phrases “Jack Wolfskin Outlet” on its website. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant submits that the disputed domain name is identical or confusingly similar to the JACK WOLFSKIN trademark in which the Complainant has rights. The dominant part of the disputed domain name contains the element “Jack Wolfskin”, which is identical to the JACK WOLFSKIN trademark. In addition to the JACK WOLFSKIN trademark, the disputed domain name also comprises the generic Top-Level Domain (“gTLD”) “.online”.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a license or any other permission to the Respondent to use its JACK WOLFSKIN trademark. The Complainant asserts that the Respondent has never used and does not intend to use the JACK WOLFSKIN trademark in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the wide recognition of the JACK WOLFSKIN trademark, the Respondent must have known the Complainant and its JACK WOLFSKIN trademarks when registering the disputed domain name. The Complainant believes that the Respondent intentionally attempts 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 the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
In the event of lack of a response, the Panel may – as appropriate – accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. 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 two parts: “jack-wolfskin” and “online”. The first part is the distinctive portion of the disputed domain name and it is identical to the Complainant’s JACK WOLFSKIN trademark. The second part “online” is just the gTLD, which is customarily disregarded for purposes at the first element analysis.
The Panel recognizes the Complainant’s trademark rights and concludes that the disputed domain name is identical or confusingly similar with the Complainant’s JACK WOLFSKIN trademark. The addition of a dash (“-”) between “Jack” and “Wolfskin” does not avoid a finding of identity or confusing similarity between the disputed domain name and the Complainant’s trademark, in particular when taking into consideration that the domain name linked to the Complainant’s official website also contains a dash between “Jack” and “Wolfskin”.
The Panel concurs with several prior UDRP panels in relation to JACK WOLFSKIN trademarks, which have held that when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Andy Lau,WIPO Case No. D2015-1536; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. bob rivera,WIPO Case No. D2013-0178.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel also finds that the Complainant has established that the Respondent does not have a right or legitimate interest in the disputed domain name.
While the burden of proof rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests, is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is required to make out a prima facie case to shift the burden of production to the Respondent to come forward demonstrating its rights or legitimate interests. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s JACK WOLFSKIN trademark in the disputed domain name.
The Complainant further states that the Respondent uses the disputed domain name for a website where it offers identical products, while using the trademarks and the device mark “JACK WOLFSKIN + paw device”, thereby intentionally creating the false impression that this website is operated by the Complainant or a person connected to the Complainant.
The Respondent uses the disputed domain name to operate a website to sell outerwear and apparel, some of which are stated to be the Complainant’s products, however it is unclear whether they are legitimate JACK WOLFSKIN products or counterfeit products.
If the outerwear and apparel sold on the Respondent’s website are not genuine JACK WOLFSKIN products, the Respondent’s use of the disputed domain name does not grant it rights or legitimate interests since it is using the Complainant’s JACK WOLFSKIN trademark for a site selling other products. The same applies if the Respondent is using the disputed domain name to commit a fraud on potential clients of the Complainant.
If the Respondent is offering genuine JACK WOLFSKIN products from the Respondent’s website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) records, the consensus view amongst panelists is that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements. However, these requirements normally include not only the actual offering of goods and services at issue and the use of the website to sell only the trademarked goods, but also that the website accurately and prominently discloses the registrant’s relationship with the trademark holder. Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. firstshoppingsell, Julie Julie,WIPO Case No. D2013-0176.
In this case, rather than make its true status clear, the home page of the website includes the statements “Created With by Jack Wolfskin Outlet © 2017 All rights reserved.”
The Complainant asserts categorically that there is no relationship between the Respondent and the Complainant and that the Complainant has no connection with the website or its offering. Accordingly, the Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
In our case, the Panel visited the disputed domain name on February 26, 2018, and found that the disputed domain name resolves to a website in Turkish that offers JACK WOLFSKIN products and contains the Complainant’s trademark, the website did not appear to disclose any information regarding the Respondent’s relationship with the Complainant. Specifically, the Complainant alleges that there was no visible disclaimer on the website. As such, Internet users may have been misled to assume that the website was run by the Complainant itself, or that there was some affiliation or sponsorship between the Parties. In fact, there is no disclaimer or accurate disclosure of the relationship between the Parties. Furthermore, the Respondent uses the word “outlet” clearly suggesting a business relationship with the Complainant (see section 2.5 of the WIPO Overview 3.0).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the disputed domain name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the JACK WOLFSKIN trademark at the time the disputed domain name was registered. The disputed domain name resolves to a website that displays the JACK WOLFSKIN trademark, reproduces the Complainant’s Bear Paw device and sells products that the site asserts are the Complainant’s products.
The Respondent registered the disputed domain name for the purposes of operating a website specifically to sell JACK WOLFSKIN products. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s JACK WOLFSKIN trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent also uses the “created with, by Jack Wolfskin outlet” expression in the website at the disputed domain name, it is clear that the Respondent’s obvious intent was to misleadingly divert the consumers to its website, causing confusion among consumers by creating the impression of a relation with or sponsorship or endorsement of the Respondent by the Complainant. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and the JACK WOLFSKIN trademarks and to disrupt the business of a competitor – the Complainant – by diverting consumers away from the Complainant’s websites. The Respondent’s actions therefore constitute bad faith. Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. v. Xu Hai Bo/xuhaibo,WIPO Case No. D2014-0093.
Moreover, the Respondent has registered at least one other domain name incorporating the JACK WOLFSKIN trademark. Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. WhoisGuard Protected, WhoisGuard Inc. / Mehmet Demir,WIPO Case No. D2018-0024. For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith registration.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark JACK WOLFSKIN, as well as its extensive and intensive use, the Respondent, who appears to be located in Turkey where the Complainant is well-known, was aware of the Complainant and its JACK WOLFSKIN trademark at the time of the registration of the disputed domain name, e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name must be considered as an inference of bad faith registration.
Therefore, in light of the above-mentioned circumstances, in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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.
Gökhan Gökçe
Sole Panelist
Date: March 8, 2018
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