The Complainant is Thomas Wuttke of Quickborn, Germany, represented by Harmsen Utescher, Germany.
The Respondent is J.A.M.E.S. Lee of Putian, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with SIDN through Hostnet B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 15, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain names. On October 15, 2012, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2012. In accordance with the Regulations, article 7.1, the due date for Response was November 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.
The Center appointed Alfred Meijboom as the panelist in this matter on November 20, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The following facts remained uncontested.
The Complainant is founder and limited partner of the textile manufacturing company Wellensteyn International GmbH & Co. KG, and is holder of several trademarks, including the following (hereinafter: the “Trademarks”):
- Community device mark (registration no. 10518231), registered on June 8, 2012, for goods and services in classes 3, 9, 14, 16, 18, 24, 25, 28 – 30, 32 – 35, 41, 43;
- Community word mark WELLENSTEYN (registration no. 3500998), registered on May 23, 2005, for goods in classes 18, 24, 25;
- German national word mark WELLENSTEYN (registration no. 30043641), registered on November 27, 2000, for goods and services in classes 25, 33 and 36; and
- German national word / device mark (registration no. 30722986), registered on July 13, 2007, for goods in classes 25, 9 and 18.
The disputed domain names were registered by the Respondent in August 2012. The disputed domain names resolve to websites which display the Trademarks, and on which jackets bearing the Trademarks are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are nearly identical to the Trademarks. The Complainant argues that that the disputed domain names are dominated by the element “wellensteyn”, as the elements “wien” - which means “Vienna” in German - and “schweiz - which means “Switzerland” in German - are geographical indications, and the element “jassen” - Dutch for jackets or coats - is merely descriptive for the goods offered under the Trademarks.
The Complainant has not found that the Respondent has any registered trademarks, trade names or other rights or legitimate interests in respect of the disputed domain names. Moreover, according to the Complainant, no license or authorization has been given by the Complainant to the Respondent.
The Complainant claims that the disputed domain names have been registered for the purpose of exploiting the good reputation of the Complainant and its Trademarks and that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with article 10.3 of the Regulations, since no Response has been filed by the Respondent, the Panel will have to decide based on the Complaint. Based on this provision, the Panel shall grant the Complaint unless it appears unlawful or without merit. Therefore, the Panel will review the Complaint on this basis.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes the following:
a) that the disputed domain names are identical or confusingly similar to:
(i) a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
(ii) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b) that the Respondent has no rights to or legitimate interests in the disputed domain names; and
c) that the disputed domain names have been registered or are being used in bad faith A. Identical or Confusingly Similar
The Complainant relies on various German national WELLENSTEYN device and wordmarks. Article 2.1(a)(i) of the Regulations requires a disputed domain name to be identical or confusingly similar to trademarks “protected under Dutch law in which the complainant has rights”. As the aforementioned trademarks are not valid in the Netherlands, they cannot be considered to be protected under Dutch law (see, e.g., Turkcell Iletisim Hizmetleri A.S. v. Onur,WIPO Case No. DNL2010-0047).
The Complainant has, however, also shown that it has rights in the Community trademarks and WELLENSTEYN (together the “WELLENSTEYN Trademarks”). In the Panel’s opinion “Wellensteyn” is the dominant element of the device mark, taking into account the less distinctive aspect of the remainder.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the invoked trademarks on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Panel finds that the disputed domain names are confusingly similar to the WELLENSTEYN Trademarks, because each of the three disputed domain names incorporates “wellensteyn” in its entirety. The disputed domain names differ from the WELLENSTEYN Trademarks only in that they contain the generic suffixes “jassen”, “schweiz” and “wien”, respectively. The addition of such generic terms does not prevent confusion (see, e.g., LEGO Juris A/S v. Nick Terlouw, WIPO Case No. DNL2011-0023; Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; and Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024).
The Panel therefore rules that the Complainant has met the first ground of the Regulations as set out in article 2.1(a). B. Rights or Legitimate Interests
The Complainant states that the Respondent has no rights to or legitimate interests in the disputed domain names. As far as the Complainant is aware, the Respondent is not entitled to any trademark registration for the term “wellensteyn”, nor has the Complainant granted permission to use the Trademarks. The Complainant further claims that the Respondent is not an authorized dealer, and that the websites at the disputed domain names do not contain any indication regarding the actual owner of or responsible person for the web-shops on those websites.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Taking into account that the Respondent did not file a Response, the Panel is not aware of any rights or legitimate interests that the Respondent may have in the disputed domain names and will have to presume it has none.
The Panel therefore rules that the Complainant has met the second ground of the Regulations as set out in article 2.1(b). C. Registered or Used in Bad Faith
The Complainant argues that it is very famous for its jackets. On the basis of the limited record of this case, the Panel could not establish that the WELLENSTEYN Trademarks have a reputation in the Netherlands. However this may be, the Panel notes that the WELLENSTEYN Trademarks, which are effective and enforceable in the Netherlands, predate the registration of the disputed domain names by the Respondent. Furthermore, given the contents of the websites at the disputed domain names, the Panel finds it highly likely that the Respondent was aware of the WELLENSTEYN Trademarks at the time of registration. Even in the absence of any such positive awareness, in the circumstances of this case the Respondent had the obligation to examine the rights position in relation to the disputed domain names (see, e.g., Stichting VVV Groep Nederland v. B Ltd.,WIPO Case No. DNL2012-0042).
The Panel further finds that the use of the disputed domain names for websites on which jackets bearing, inter alia, the WELLENSTEYN Trademarks are offered for sale, and which prominently display the Complainant’s word and device marks, without any disclaimer dissociating the Complainant from such websites, is indicative of bad faith on the part of the Respondent.
The Panel therefore rules that Complainant has met the third ground of the Regulations as set out in article 2.1(c). 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain names , and be transferred to the Complainant.
Alfred Meijboom
Panelist
Dated: November 30, 2012
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