The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Germany, represented by SILKA AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Lewis Marsden, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2020, 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 December 8, 2020 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 amendment to the Complaint on December 8, 2020 to the Center. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on January 27, 2021. 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 was founded in 1981 in Frankfurt, Germany, and develops outdoor apparel and sports equipment products. The first Jack Wolfskin store was opened on October 1, 1993 in Heidelberg, Germany and today it has 549 stores worldwide. The disputed domain name was registered on June 17, 2019 and resolves to a website that is branded JACK WOLFSKIN and sells outdoor apparel. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name was registered on June 17, 2019 and wholly incorporates the Complainant’s registered trade mark JACK WOLFSKIN. It says that the addition of a geographical term such as “belgie” which refers to Belgium does not distinguish the disputed domain name and does not prevent a finding of confusing similarity under the first element. The Complainant says that the disputed domain name is being used by the Respondent to resolve to a website that imitates the Complainant’s website, which uses its JACK WOLFSKIN mark and logo and at which the Respondent offers for sale low-price unauthorized goods that appear to be counterfeit. It says that Internet users are misled into visiting the Respondent’s website under the misapprehension that the website is endorsed by the Complainant, and when they arrive at the site that it features no disclaimer. Potential customers, says the Complainant, can create an account on the Respondent’s website from which sensitive information is obtained, such as usernames and passwords. Such request for sensitive information on a site which the Complainant does not control is, says the Complainant, a potential security threat and has the potential to detrimentally affect the Complainant’s reputation if the security measures employed are not up to standard. The Complainant notes H & M Hennes & Mauritz AB v. Donnie Lewis,WIPO Case No. D2017-0580, in which in similar circumstances the Panel held that such use of a domain name did not constitute any rights or legitimate interests in the domain name and the Complainant submits that the same reasoning is applicable in this case. Further, the Complainant says that the disputed domain name contains the Complainant’s JACK WOLFSKIN trade mark in its entirety and cannot constitute fair use because such use effectively impersonates or falsely suggests an affiliation with the trade mark owner. As far as use in bad faith is concerned, the Complainant says that the website to which the disputed domain name resolves, displays the Complainant’s logotype and the layout/design of the website is similar to that of the Complainant’s official website. Using the Complainant’s marks and imitating the Complainant’s online presence in this way, in an effort to mislead Internet users into thinking that there is a legitimate association between the disputed domain name and the Complainant, amounts to a use in bad faith. The Complainant submits that the Respondent has no relationship to its well-known JACK WOLFSKIN trade mark or to the disputed domain name and that there is no way that the Respondent could be legitimately using its mark or the disputed domain name in the circumstances described above. The Complainant also notes that the Respondent is using a privacy shield. Although the use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The Complainant suggests that the motive for the Respondent to use a domain privacy service in this instance has been to help mask its identity, which reinforces the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns German word mark registration under number DE1049490, registered on June 8, 1983, and United States trade mark registration for a stylized version of JACK WOLFSKIN under number 3968989, registered on May 31, 2011. The disputed domain name wholly incorporates the Complainant’s registered word mark JACK WOLFSKIN. Although the disputed domain name also includes the geographical term “belgie”, which is a geographical reference to Belgium, this term does not distinguish the disputed domain name and does not prevent a finding of confusing similarity under the first element. As a result, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has registered trade rights and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it is not affiliated with the Respondent and has not authorized the use of its JACK WOLFSKIN trade mark or logo. It is apparent, as submitted by the Complainant, that the disputed domain name is being used by the Respondent to resolve to a website that imitates the Complainant’s website, which uses the Complainant’s JACK WOLFSKIN mark and logo and from which the Respondent offers for sale various goods similar to those offered by the Complainant. The Complainant asserts that these products are low-priced and appear to be counterfeit. The Panel accepts that Internet users will be diverted by the disputed domain name into visiting the Respondent’s website under the likely misapprehension that it belongs to the Complainant or is endorsed by the Complainant, when this is not the case and in circumstances that the site features no disclaimer. This is not bona fide conduct and is inconsistent with the Respondent having any rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed a response or rebutted this case and therefore the Panel finds that the Complainant has successfully made out its case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes, as submitted by the Complainant, that the circumstances in this case are very similar to those in H & M Hennes & Mauritz AB v. Donnie Lewis,WIPO Case No. D2017-0580,in which the panel also found that the respondent had no rights or legitimate interests in the domain name concerned. Accordingly, the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Complainant’s registered trade mark rights, as noted above, predate the registration of the disputed domain name by many years. The Complainant started use of the JACK WOLFSKIN brand as early as 1981, and distributes its products internationally through a substantial network of stores and also online through its own websites, including the one at the Complainant’s domain name As described under Part B above, the disputed domain name resolves to a website that features the JACK WOLFSKIN marks, which offers for sale outdoor apparel and overall appears to look like it belongs to the Complainant, or has been authorized by the Complainant, when this is not the case. This conduct amounts, under paragraph 4(b)(iv) of the Policy, to the Respondent having intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or products and it is evidence of both registration and use of the disputed domain name in bad faith. In all of these circumstances, that fact that the Respondent has used a privacy shield in an effort to try to mask its identity reinforces the Panel’s view of the Complainant’s bad faith. As a result, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and that the Complaint succeeds under this element 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 Alistair Payne
The Complainant owns numerous trade mark registrations for JACK WOLFSKIN dating back to 1983 including German trade mark registration number DE1049490, registered on June 8, 1983, and United States trade mark registration number 3968989, registered on May 31, 2011. It also owns various domain name registrations containing the JACK WOLFSKIN mark, including:
The Complainant says that its registered trade mark rights, as noted above, predate the registration of the disputed domain name. Further, says the Complainant, it started use of the JACK WOLFSKIN brand as early as 1981 and that its products under that mark are now distributed in numerous countries. It submits that the active business presence of the Complainant means that it is unlikely that the Respondent was unaware of the Complainant’s business when it registered the disputed domain name and considering that the disputed domain name is identical or confusingly similar to the Complainant’s extensively used and well-known trade marks, that the Respondent must have been aware of the Complainant and of its mark at the time of registration of the disputed domain name.
Sole Panelist
Date: February 10, 2021
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