WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Wuttke v. Sharing
Case No. D2011-1809
1. The Parties
Complainant is Thomas Wuttke of Henstedt-Ulzburg, Germany, represented by Harmsen Utescher, Germany.
Respondent is Sharing of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name is <wellensteynjacken.com> which is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 21, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 21, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 15, 2011. This Panel finds that it was properly constituted. This 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
Complainant is the founder and today limited partner of the textile manufacturing company Wellensteyn International GmbH & Co. KG.
Complainant has rights over the WELLENSTEYN trademark for which it holds several registrations, such as: registration No. 30043641 with the German Office of Patents and Trademarks, registered in November 2000, in classes 25, 33 and 36; registration No. 817862 with the World Intellectual Property Organization, registered in November 2003, in classes 25, 33 and 36; and registration No. 3500998 with the European Office for Harmonization in the Internal Market, registered in May 2005, in classes 18, 24 and 25.
Likewise Complainant has rights over other WELLENSTEYN and designs trademarks for which it holds several registrations, such as: registration No. 30659755 with the German Office of Patents and Trademarks, registered in January 2007, in class 25; and registration No. 984274 with the World Intellectual Property Organization, registered in August 2008, in classes 9, 18 and 25.
The disputed domain name was created on August 24, 2011.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant and the company Wellensteyn International GmbH & Co. KG are very famous for their jackets which are distributed by most known retailers in Germany. In Germany, there are currently over thirty “Wellensteyn Collection Stores”. Complainant also offers its products in its web-shop under several domain names, such as <wellensteyn.de> and <wellensteyn.com>.
The disputed domain name is nearly identical to Complainant’s trademarks. The disputed domain name is dominated by the element “Wellensteyn”, since the verbal element “jacken” is the German word for jackets and thus, merely descriptive in view to the goods offered under the trademark. Therefore, the signs for comparison are even identical as far as their distinctive components are concerned.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
On the website associated to the disputed domain name the designations “Wellensteyn” and the typical “Wellensteyn”-devices, inter alia registered for Complainant as German trademark No. 30659755, are used.
There is no indication that Respondent owns any trademark, trade name or other rights in the designation “wellensteyn”.
There is also no relationship between Respondent and Complainant. Neither is Respondent a licensee of Complainant nor has Respondent otherwise obtained any authorization to use the trademark or/and trade name “Wellensteyn” and the registered devices.
Respondent uses the disputed domain name for commercial purposes. Respondent operates under the disputed domain name a web-shop and asserts to offer “Wellensteyn”-Jackets. However, Complainant has nothing to do with Respondent; in particular, Respondent is not an authorized dealer. Complainant must assume that the products labeled with the mark “Wellensteyn” offered in the web-shop under the disputed domain name are counterfeits.
If Internet users search for Complainant with the designation “Wellensteyn” and the most popular products, which are jackets (in German “Jacken”), they reach the website associated to the disputed domain name of Respondent. Due to the identical products and the identical word “Wellensteyn”, Respondent arouses the impression that such web site under the disputed domain name would be operated by Complainant or an authorized retailer. Neither the owner, nor any responsible person of the online store is named on said website.
It follows from the foregoing that the disputed domain name was registered exclusively for the purpose of exploiting the good reputation of Complainant and its trademarks and the “Wellensteyn”-jackets. Respondent intentionally attempted to attract for commercial gain by leading Internet users to Respondent’s web-shop, by creating a likelihood of confusion with Complainant’s mark. Thus, the disputed domain name was registered and used in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the WELLENSTEYN trademark.
The disputed domain name entirely incorporates the WELLENSTEYN trademark, adding the suffix “jacken” which Complainant asserts is the German word for jackets and thus descriptive of a product marketed under such trademark. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (See Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375; GA MODEFINE SA v. AES OPTICS, WIPO Case No. D2000-0306).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s WELLENSTEYN trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The web site associated to the disputed domain name shows the WELLENSTEYN trademark and the WELLENSTEYN and device trademark, and features the sale of “Wellensteyn” jackets. Complainant assumes that the “Wellensteyn” products offered in the web-shop associated to the disputed domain name are counterfeits.
Complainant asserts that there is no relationship between Respondent and Complainant, that Respondent is not a licensee of Complainant, that Respondent is not otherwise authorized to use Complainant’s trademarks and that Respondent is not an authorized dealer.
Further, the web site associated to the disputed domain name makes no reference as to who its owner or operator is, and shows no disclaimer disassociating such web site from Complainant. Complainant contends that the disputed domain name conveys the impression that the web site thereunder corresponds to Complainant or an authorized retailer. That is not a bona fide offering of products or services in this Panel’s view.
In this Panel’s view, the unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. As established in prior UDRP cases, such use is not a bona fide offering of products or services (See Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629).
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name2. From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Complainant alleged that he and his company Wellensteyn International GmbH & Co. KG are very famous for their jackets, although no evidence was provided on that specific subject. Likewise, no evidence was provided to show that the WELLENSTEYN word and design trademarks and the jackets identified thereunder are internationally-known, at least in China where Respondent appears to be domiciled as per the publicly available WhoIs record and the Registrar’s confirmation.
Notwithstanding the aforesaid and taking into consideration that Complainant’s registration and use of its trademarks preceded the creation of the disputed domain name by several years, the combination in the disputed domain name of the WELLENSTEYN trademark with the descriptive word “jacken”, and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant’s trademark and the products marketed thereunder at the time it obtained the registration of the disputed domain name.
The use of the disputed domain name for a website that is used to offer jackets bearing Complainant’s WELLENSTEYN trademark, which are precisely the products marketed by Complainant under such trademark, constitutes an improper use of Complainant’s trademark and, where coupled with any lack of disclaimer disassociating Complainant from such website, is indicative of bad faith3 for purposes of the Policy.
This Panel considers that in using the disputed domain name in such way, Respondent has sought to create a likelihood of confusion with Complainant and its trademark as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name, <wellensteynjacken.com>, be transferred to Complainant.
Dated: December 26, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given[...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”; also, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.