WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin
Case No. D2012-0128
1. The Parties
Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Idstein / Taunus, Germany, represented by Harmsen Utescher, Germany.
Respondent is Huang Yan Jin of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <jackewolfskin.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2012. On January 25, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On January 30, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 31, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
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 February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012. Respondent did not respond to the Complaint. Accordingly, the Center notified Respondent’s default on February 27, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 2, 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
Complainant is a German clothing company which specializes in outdoor and sporting apparel and equipment. Complainant has produced its goods for over 25 years and these goods are branded with trademarks including WOLFSKIN and JACK WOLFSKIN. Complainant has provided details and evidence of multiple trademark registrations for WOLFSKIN and JACK WOLFSKIN including a registration in Germany for JACK WOLFSKIN dated August 23, 1982, a European Community registration for JACK WOLFSKIN dated March 6, 2008, International registrations for JACK WOLFSKIN dated 1994 and 1995, and European Community trademark registrations for WOLFSKIN and JACK WOLFSKIN & Design dated June 27, 2002 and January 31, 2003, respectively.
The owner of the disputed domain name is identified as Huang Yan Jin, Respondent in this proceeding. The disputed domain name was created on December 2, 2011. The registrar for the disputed domain name is Jiangsu Bangning Science & technology Co. Ltd. The record shows that webpages featured at the disputed domain name have advertised clothing items and have featured Complainant’s trademarks.
5. Parties’ Contentions
Complainant claims that its products have an outstanding reputation of high quality in Germany, Europe, and other states in the world. Complainant alleges that the disputed domain name is confusingly similar to its trademarks and that the disputed domain name is being used to sell counterfeit goods.
Complainant claims that the disputed domain name is confusingly similar to its trademarks in two manners: first, it features Complainant’s JACK WOLFSKIN trademark and an additional literal element, specifically the letter “e”. Complainant claims that the use of an additional letter “e” and the identical terms used in its JACK WOLFSKIN trademark to form the disputed domain name does not create an impression which is distinct from its JACK WOLFSKIN trademark. Complainant also claims that the disputed domain name is confusingly similar to its WOLFSKIN trademark because the first portion of the disputed domain name (“Jacke”) is identical to the German word for “jacket”, an article of clothing which is sold under its WOLFSKIN trademark.
Complainant also alleges that the content featured at the disputed domain name creates an impression that the disputed domain name is owned by or operated by Complainant. Specifically, the content features Complainant’s JACK WOLFSKIN and JACK WOLFSKIN & Design trademarks and advertises products which are identical to those sold under Complainant’s trademarks.
Complainant states that Respondent is not related to Complainant and that Respondent does not have a license or other authorization to use Complainant’s trademarks or register the disputed domain name incorporating Complainant’s trademarks. Complainant also alleges that Respondent’s use of the disputed domain name and Complainant’s trademarks for an online store featuring apparel is an attempt to falsely impress consumers and lead them to believe that the website is owned and operated by Complainant.
Regarding bad faith, Complainant alleges that the registration of the disputed domain name by Respondent is indicative of bad faith because the disputed domain name incorporates Complainant’s trademarks. Further, Complainant alleges that Respondent’s use of the disputed domain name leads consumers to believe that a commercial connection exists between the disputed domain name and Complainant.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case.
The language of the Registration Agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Complainant has filed arguments in support of the incorporation of an English word in the disputed domain name, the use of European languages on the webpages featured at the disputed domain name, and the incorporation of certain currency payment methods (British Pounds and United States Dollars) offered on these webpages which Complainant states are reflective of Respondent’s intent to target English speaking people through use of the disputed domain name. The Center then sent a communication advising Respondent to comment on the language of the proceeding. Respondent has not commented on the language of the proceedings. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay.
B. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s JACK WOLFSKIN and WOLFSKIN trademarks in their entireties. It has been held that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name features the JACK WOLFSKIN trademark and an additional literal element in the form of the letter “e”. It has been held that the addition of a single letter to a trademark to form a domain name does not sufficiently distinguish the domain name from the trademark at issue. See, e.g., Research In Motion Limited v. You Xia, WIPO Case No. D2009-1141 (holding that “the disputed domain name integrates the Complainant's trademark in its entirety, as a dominant element, with an addition of one letter. The addition of a letter does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark”).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Complaint has registered trademark rights in JACK WOLFSKIN which precede the registration of the disputed domain name. These rights are recognized in Respondent’s residence country of China, where they can be traced to 1995.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s JACK WOLFSKIN trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in Complainant’s trademark. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The record shows that Complainant has trademark rights in JACK WOLFSKIN and provides clothing under this mark. The website located at <jackewolfskin.com> advertises goods identical to those provided by Complainant under Complainant’s JACK WOLFSKIN trademark. The website also features Complainant’s JACK WOLFSKIN and JACK WOLFSKIN & Design trademarks. It is clear that Respondent was aware of Complainant’s trademark rights when registering the disputed domain name given that the disputed domain name incorporates Complainant’s trademark in its entirety and the content of the associated website apparently features goods identical to those offered by Complainant.
There is also evidence of bad faith use. Specifically, the webpages featured at the disputed domain name include language which reads “Copyright © 2012 Jack Wolfskin”. This language could lead consumers to believe that the content of the disputed domain name is owned by, authorized by, licensed by, affiliated with, or associated with Complainant. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the disputed domain name illustrates intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Accordingly, the Panel finds that Complainant has satisfied the requirements of 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, the Panel orders that the disputed domain name <jackewolfskin.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: April 17, 2012