The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Germany, represented by SILKA AB, Sweden.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2021 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 April 28, 2021. 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 April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2021. The Center appointed Martin Michaus Romero as the sole panelist in this matter on June 10, 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 is a major German producer of outdoor wear and equipment headquartered in Idstein, Germany. It was founded in 1981 and now is one of the biggest suppliers of outdoor products and one of the most successful franchisers in the German specialist trade market of sport equipments. The Complainant’s products include mountain and leisure clothing, footwear, ruck sacs, sleeping bags, and tents. The Complainant has an active market in all the countries included in the disputed domain names, commercializing the products directly or through retail partners. 2021 is the year of the 40th anniversary of the Complainant. The Complainant is the owner of the registered trademark JACK WOLFSKIN in Germany, the European Union, and internationally, as a word figure mark in several classes in several countries all over the world. In particular it owns: Reg. No. Trademark Territory Nice Class Registration Date 001161272 JACK WOLFSKIN European Union 14 September 19, 2000 1049490 JACK WOLFSKIN Germany 20, 22, 25 June 8, 1983 509992 JACK WOLFSKIN International Registration designating multiple jurisdictions 18, 20, 22, 25 November 11, 1986 UK00801209325 JACK WOLFSKIN United Kingdom 1, 3, 9, 12, 18, 20, 22, 24, 25, 26, 27, 28, 35, 41 and 42 May 19, 2015 The Complainant has registered the domain name The disputed domain names were registered: The Complainant alleges that the disputed domain names are being used to impersonate the Complainant’s website. The Panel notes that the Registrar has confirmed that the disputed domain names are registered by the same registrant. 5. Parties’ Contentions A. Complainant The Complainant states in its Complaint that the Respondent: 1) Registered the disputed domain names which are identical or confusingly similar to the Complainant’s well-known trademark JACK WOLFSKIN without the Complainant’s knowledge or authorization. 2) Registered the disputed domain names to create confusion amongst Internet users, that the disputed domain names are affiliated with the Complainant. 3) Has no rights or legitimate interests in the disputed domain names; and 4) Likely intended to confuse the Complainant’s customers or potential customers, considering the complete reproduction of the JACK WOLFSKIN trademark in the disputed domain names. 5) Except for one of the disputed domain names for which the access is denied, the disputed domain names resolve to active websites impersonating the Complainant’s official website which use the Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission. Accordingly, the disputed domain names were selected, registered, and used by the Respondent in bad faith and not for a bona fide offering of goods or services, nor any fair use, but rather to mislead Internet users, disrupt the Complainant’s business, and affect the reputation or notoriety of the JACK WOLFSKIN trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has submitted evidence of its rights in the JACK WOLFSKIN trademark. The disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names The addition of geographical terms, as “DK” (from Denmark), “NL“ (from the Netherlands), “Romania” (from Romania), “Schweiz” (from Switzerland), “Slovakia” (from Slovakia), “Turkiye” (from Turkey) does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. The Top-Level Domain (“TLD”) suffix, “.com”, should be disregarded for the purposes of the confusing similarity test. According to section 1.11.1 of the WIPO Overview of WIPO Panel views on selected UDRP questions, third edition (the “WIPO Overview 3.0”), the TLD, “.com” does not prevent a finding of confusing similarity between the disputed domain names and the JACK WOLFSKIN trademark. Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Respondent has not received permission or authorization to use the Complainant’s trademark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence to demonstrate the contrary. It should be pointed out that nothing in the available record indicates that the Respondent is an individual, business, or corporation known by the name “Jack Wolfskin”. Furthermore, the Respondent is not using the disputed domain names for a bona fide offering of good or services, nor for a legitimate noncommercial or fair use that might give rise to rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names, has made demonstrable preparation to use it for a bona fide offering of good or services, owned a trademark or is making a legitimate noncommercial or fair use of the disputed domain names. Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. The Panel finds that the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which the Respondent has not rebutted. Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to the evidence submitted by the Complainant, it is clear to the Panel that the registration and the use of the disputed domain names have been in bad faith, by including the JACK WOLFSKIN trademark, to intentionally attract Internet users for commercial gain to websites impersonating the Complainant’s official website. The inclusion of geographical terms could only increase the misconception that the disputed domain names belong to the Complainant, in an attempt to deceive or lead Internet users to believe that the disputed domain names are operated by the Complainant. The Panel finds that the disputed domain names were registered and are being used in bad faith due to the following: 1) According to the WhoIs details, the disputed domain names were registered in November or December 2020. The Complainant’s trademarks were registered way before that date. The disputed domain names were registered in 2020, thirty-four years after the Complainant’s trademark registration No. 509992 was filed. The disputed domain names were registered without authorization as the Complainant did not grant the Respondent any authorization to use its trademark in a domain name. 2) The previous and current use of the disputed domain names were deliberately conducted to take advantage of the reputation of the business activities of the Complainant and goodwill of its trademark. The Panel is of the opinion that at the time the disputed domain names were registered, the Respondent must have been aware of the existence of the Complainant’s JACK WOLFSKIN trademark. 3) The Respondent has demonstrated, by registering the disputed domain names, which reproduce the Complainant’s trademark, an intent to capitalize on the goodwill of the Complainant’s trademark. Furthermore, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites or other online location by creating a likelihood of confusion with the Complainant’s JACK WOLFSKIN trademark. As it was shown, the disputed domain names resolve to active website impersonating the Complainant’s official website. They are targeting the Complainant’s trademark and logo as well as official pictures of products, probably obtained from the Complainant’s website without its permission. The fact that access appears to have been denied with respect to one of the disputed domain names does not prevent a finding of bad faith. The above, reveals the intent of the Respondent to take unfair advantage of the Complainant’s well-known trademarks and of the goodwill of the Complainant’s business. 4) The above-mentioned activities, as well as the Respondent’s default constitute, in view of the Panel, a clear evidence of registration and use of the disputed domain names in bad faith. In view of the above the Panel finds that the disputed domain names were registered and are being used in bad faith. The Panel finds that the Complainant satisfies 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 names Martin Michaus Romero
Sole Panelist
Date: June 24, 2021
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