WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Wuttke v. Lin Yali/ Domains by Proxy, Inc.
Case No. D2011-2050
1. The Parties
The Complainant is Thomas Wuttke of Henstedt-Ulzburg, Germany, represented by Harmsen.Utescher, Germany.
The Respondents are Lin Yali of Fujian, China/ Domains by Proxy, Inc. of Scottsdale, Arizona, United States of Amercia (the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <wellensteynjacken.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2011. On November 21, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, November 21, 2011, GoDaddy.com, Inc. 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 1, 2011 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 6, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2011.
The Center appointed Adam Samuel as the sole panelist in this matter on January 16, 2012. 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 the founder and currently the limited partner of a textile manufacturing company, Wellensteyn International GmbH & Co KG. The company makes and sells jackets. The Complainant is the legal owner of a number of German trademark registrations for WELLENSTEYN, the earliest of which appears to be number 30043641, registered on November 27, 2000.
The disputed domain name was registered on September 2, 2011.
5. Parties’ Contentions
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The Complainant and his company are very famous for their jackets which are distributed by most known retailers in Germany. The Complainant owns numerous German and other trademark registrations for the name WELLENSTEYN, going back to 2000. The disputed domain name is dominated by the element “Wellensteyn”. The word “Jacken” is the German word for jackets and merely describes goods offered under the trademark. There is no indication that the Respondent owns any trademark, trade name or other rights in the designation “Wellensteyn”. The Respondent has no rights or legitimate interests in respect of the domain name. There is and has been no relationship between the Respondent and the Complainant. Nor has the Respondent otherwise obtained any authorization to use the trademark and/or tradename WELLENSTEYN. The Complainant must assume that the products labeled with the mark WELLENSTEYN offered in the web-shop to which the disputed domain name resolves are counterfeits.
If Internet users search for the Complainant using the name “Wellensteyn” and “jackets”, they reach the Respondent’s website. The header of the websites just gives the Complainant’s name and his company, giving the impression to Internet users that the operator of the online-shop and seller of the products and/or the owner of the domain name is in some way associated with the Complainant.
The disputed domain name was registered exclusively for the purposes of exploiting the good reputation of the Complainant and his trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
A. Identical or Confusingly Similar
The domain name consists of the Complainant’s trademark WELLENSTEYN, the German word “Jacken” which represents one of the main products manufactured and sold by the Complainant’s company using the Complainant’s trademark and the standard suffix “.info”. The addition of a generic word to a trademark in forming a domain name, particularly one that describes the products which the trademark is used to sell does not remove the confusing similarity between a domain name and the trademark concerned.
As the Panel said in Pierre Ballmain SA. v. Guilian Zhang, WIPO Case No. D2010-2140:
“The consensus view of previous panels is that a domain name which incorporates a trade mark in its entirety and incorporates other elements which do not distinguish the domain name from the trade mark is confusingly similar for purposes of paragraph 4(a) of the Policy.
The Disputed Domain Name incorporates the trade mark BALMAIN in its entirety. The words “jackets” and “sale” after the word “balmain” in the Disputed Domain Name are descriptive and do not successfully distinguish the Disputed Domain Name from the trade mark BALMAIN. The Panel therefore holds that the Disputed Domain Name is confusingly similar to the trade mark BALMAIN.”
For the same reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Wellensteyn” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s company uses the Complainant’s trademark to sell jackets. The disputed domain name consists of that trademark and the German word for jackets. Therefore, in this Panel’s view, the Respondent in selecting this domain name clearly knew of the Complainant and his company’s business of selling jackets.
The disputed domain name resolves to a website apparently marketing the Complainant’s company’s products without any indication that the website does not belong to the Complainant, his company or an authorized distributor of that company.
In this Panel’s view, it is impossible, in the circumstances, at least without a Response to the Complaint on this point, to identify a reason why the Respondent registered the disputed domain name rather than any other available domain name, other than to attract business or Internet users to its website who were looking for a website connected to the Complainant’s trademark or business.
The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be one or more of the following: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain through click-through revenue or persuade the Complainant to buy the disputed domain name from the Respondent for an amount in excess of its out-of-pocket expenses. These each constitute evidence of registration and use in bad faith.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. As a result, it is unnecessary to deal with the Complainant’s other contentions.
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 <wellensteynjacken.info> be transferred to the Complainant.
Dated: February 1, 2012