The Complainant is Jack Wolfskin Ausrüstung für Draussen, GmbH & Co. KGaA, Germany, represented by Silka AB, Sweden.
The Respondent is Lucas Reiniger, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2021, 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 April 8, 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 12, 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021. The Center appointed Kaya Köklü as the sole panelist in this matter on May 14, 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 Germany based company, which was founded in 1981 and provides outdoor and sports equipment worldwide. It currently operates 549 stores worldwide (Annex 5 to the Complaint). The Complainant is the owner of the word and figurative trademark JACK WOLFSKIN, which has been launched in 1983 and is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the German Trademark Registration No. DE1049490, registered on June 8, 1983, and the European Union Trade Mark Registration No. 001161272, registered on September 19, 2000. These registered trademarks cover protection for various goods and services, in particular for textiles and clothing (Annex 6 to the Complaint). The Complainant also owns and operates various domain names, which incorporate the JACK WOLFSKIN trademark, such as The Respondent is an individual from Germany. The disputed domain name was registered on February 22, 2021. According to evidence submitted by the Complainant, at the time of filing the Complaint the disputed domain name did not resolve to an active website. According to screen captures in the case record made on April 14, 2021, the disputed domain name resolved to a website in Romanian language, which was used for offering various kinds of JACK WOLFSKIN branded clothing. On the website at the disputed domain name, the Respondent prominently used the JACK WOLFSKIN word and figurative trademark without publishing any visible disclaimer describing the (lack of) relationship between the Parties. At the time of the decision, the disputed domain name does no longer resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain name. The Complainant is of the opinion that the disputed domain name is confusingly similar to its JACK WOLFSKIN trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. 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 the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. 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 replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered trademark rights in the mark JACK WOLFSKIN by virtue of various trademark registrations, including trademark registrations covering protection in Germany, where the Respondent appears to be located. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered JACK WOLFSKIN trademark, as it fully incorporates the Complainant’s trademark. As stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The mere addition of the general term “magazin” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s JACK WOLFSKIN trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement. In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark JACK WOLFSKIN in a confusingly similar way within disputed domain name. In return, the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). There is particularly no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a Response, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel particularly believes that the Respondent cannot be assessed as a legitimate dealer for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent’s website, which was linked to the disputed domain name until recently, did not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized reseller or distributor for the Complainant’s genuine products in Romania. The fact that this use of the disputed domain name started after filing of the Complaint further proves the lack of rights and legitimate interests of the Respondent. This assessment is supported by the nature of the disputed domain name, which in view of the Panel carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0 . In the Panel’s view, all this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name. At the date of registration of the disputed domain name, the Complainant’s JACK WOLFSKIN trademark was already registered and widely used for many years. It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its JACK WOLFSKIN products. Further, and after having reviewed the screen captures of the website linked to the disputed domain name in the case record, the Panel is convinced that the Respondent intentionally registered the disputed domain name in order to generate Internet traffic to its own website. The prominent use of the JACK WOLFSKIN word and figurative trademark, the overall design of the website which was linked to the disputed domain name and the nature of the disputed domain name is, in view of the Panel, compelling evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its JACK WOLFSKIN trademark as to the source, sponsorship, affiliation or endorsement of its website. By doing so, the Panel concludes that the Respondent is apparently trying to misrepresent himself as the trademark owner. Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The fact that the disputed domain name does not currently (and did not at the time of filing of the Complaint) resolve to an active website does not change the Panel’s findings in this respect but rather reinforces them. The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 Kaya Köklü
Sole Panelist
Date: May 23, 2021
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