World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomas Wuttke v. wang qi ming

Case No. D2012-0608

1. The Parties

The Complainant is Thomas Wuttke of Henstedt-Ulzburg, Germany, represented by Harmsen Utescher, Germany.

The Respondent is wang qi ming of Fuzhou, China.

2. The Domain Name and Registrar

The disputed domain name <wellensteyn-jacken.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On March 26, 2012, Internet.bs Corp. 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 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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 27, 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 has submitted evidence that it is the owner of seven German trademark registrations for WELLENSTEYN. The oldest of the German trademark registrations is No. 300 43 641 with priority from June 8, 2000.

In addition to the seven German trademark registrations, the Complainant has submitted evidence that it is the owner of the following trademark registrations:

Community trademark WELLENSTEYN with registration No. 003500998 and priority from October 31, 2003.

International trademark WELLENSTEYN with registration No. 817 862 and priority from November 17, 2003.

International trademark WELLENSTEYN with registration No. 984 274 and priority from August 18, 2008.

United States of America trademark WELLENSTEYN with registration No. 3 942 676 and priority from March 11, 2008.

United States of America trademark WELLENSTEYN with registration No. 3 434 253 and priority from March 11, 2008.

The disputed domain name <wellensteyn-jacken.com> was registered on November 25, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant is the founder and limited partner of the well-known textile manufacturing company Wellensteyn International GmbH & Co. KG. The Complainant has over thirty Wellensteyn collection stores in Germany. In addition, the Complainant offers its products online via several domain names, including <wellensteyn.de> and <wellensteyn.com>. The Complainant is very famous for jackets. The Complainant’s jackets are distributed by most known retailers in Germany.

The disputed domain name <wellensteyn-jacken.com> is nearly identical to the Complainant’s registered trademark WELLENSTEYN. The disputed domain name is dominated by the trademark WELLENSTEYN and the term “jacken” which is the German word for “jackets” and merely descriptive for the goods offered under the trademark.

The Respondent’s registration and use of the disputed domain name infringes the Complainant’s trademark WELLENSTEYN. The Respondent’s website contains the typical graphic device, which is registered as a trademark by the Complainant. The Respondent does not own any trademark, trade name or other rights in the designation WELLENSTEYN. The Respondent has no rights or legitimate interests in respect of the disputed domain name.

There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademark.

The Respondent is using the disputed domain name for commercial purposes. On the website to which the disputed domain name resolves, the Respondent operates a web-shop offering jackets labeled with the trademark WELLENSTEYN. The Complainant assumes that the products offered in the Respondent’s web-shop are counterfeits.

The Respondent creates the impression that the disputed domain name is operated by the Complainant or that the Respondent is an authorized retailer. Neither the owner, nor any responsible person of the web-shop is mentioned on the Respondent’s website. In the terms and conditions found on the website, there are only references to “wellensteyn-jacken.com”, “wellensteyn jacken” and “wellensteyn”. This may cause Internet users to believe that the web-shop is operated by the Complainant and that the Complainant sells the products. This may also cause Internet users to believe that the Complainant is the holder of the disputed domain name or that the Respondent is affiliated with the Complainant.

The disputed domain name was registered for the purpose of exploiting the good reputation of the Complainant and its trademark. The Respondent intentionally attempted to attract for financial gain, Internet users to the Respondent’s web-shop, by creating a likelihood of confusion with the Complainant’s mark.

Registering and using the disputed domain name <wellensteyn-jacken.com> to sell jackets bearing the Complainant’s trademark WELLENSTEYN indicates bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark WELLENSTEYN. The disputed domain name <wellensteyn-jacken.com> incorporates the Complainant’s trademark WELLENSTEYN in its entirety with the addition of a hyphen and the generic German word “jacken”, which is “jackets” in English. The ability for such a generic word to distinguish the disputed domain name from the trademark of the Complainant is very limited. In fact, the addition of the word “jacken” may in fact increase the risk of confusion as it is descriptive of the type of product for which the Complainant has registered its trademark.

Having the above in mind, it is the opinion of this Panel that the disputed domain name <wellensteyn-jacken.com> is confusingly similar to the Complainant’s trademark WELLENSTEYN and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registration for WELLENSTEYN predates the Respondent’s registration of the disputed domain name <wellensteyn-jacken.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.

From the submitted evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and trademark. The disputed domain name is being used to sell products which the Complainant believes may be counterfeit. Furthermore, the products offered for sale by the Respondent are the same type of products for which the Complainant has registered its trademark. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

It has been argued by the Complainant that the Respondent intentionally registered the disputed domain name <wellensteyn-jacken.com> in order to take advantage of the reputation and goodwill of the Complainant’s trademark WELLENSTEYN and that the Respondent is using the Complainant’s trademark for commercial gain.

The Complainant has submitted evidence demonstrating that the Respondent is offering jackets for sale via the website to which the disputed domain name <wellensteyn-jacken.com> resolves and that the Respondent is using the Complainant’s registered trademark WELLENSTEYN when doing so. Considering that the disputed domain name is used for the same type of products for which the trademark is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain name.

Thus, the evidence in the case before the Panel demonstrates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <wellensteyn-jacken.com> has been registered and used in bad faith. Therefore the Panel concludes that the Complainant has also proved the requirement under 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 <wellensteyn-jacken.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: May 7, 2012

 

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