WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang
Case No. D2012-1042
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is lin feifang of Dazhou, Guangdong, China.
2. The Domain Name and Registrar
The Disputed Domain Name <jackwolfskinjackets.com> is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On May 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 21, 2012, the Center transmitted an email to the parties in both the Chinese and English languages regarding the language of proceedings. On May 21, 2012, the Complainant confirmed their request that English be the language of proceeding. The 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 the Respondent of the Complaint, and the proceedings commenced on May 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 11, 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 been a producer of outdoor and sporting apparel and equipment in Germany, Europe and Asia for over 25 years. The products are labeled with the trademark JACK WOLFSKIN for which the Complainant owns many trade mark registrations, including:
May 20, 2009
November 11, 1994
June 1, 1995
The Disputed Domain Name was registered on March 4, 2012, years after the trademark registrations for JACK WOLFSKIN. The Complainant is also the owner of the trademark “Jack Wolfskin + paw device”. As of May 16, 2012, the Disputed Domain Name resolved to an English language website which prominently displayed the trademark “Jack Wolfskin + paw device” and the words “Official Jack Wolfskin Jackets Outlet Store” immediately below the trademark. The website claimed to offer free shipping and providing online shopping cart facilities.
No information about the Respondent, beyond the WhoIs details of the Disputed Domain Name, is available.
5. Parties’ Contentions
The Complainant contends that:
(1) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark JACK WOLFSKIN. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety. The additional word “jackets” in the Disputed Domain Name is purely descriptive of the goods marketed under the Disputed Domain Name and does not distinguish the Disputed Domain Name from the Complainant’s trademark.
(2) 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 has not been authorized by the Complainant to use “Jack Wolfskin” or register the Disputed Domain Name. The use of the Complainant’s trademark by the Respondent is not bona fide.
(3) The Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name is used for marketing counterfeits. The Respondent is intentionally attempting to attract for commercial gain by way of leading Internet consumers to the Respondent’s website and creating a likelihood of confusion with the Complainant’s trademarks. The Respondent is betraying Internet consumers by pretending to have a non-existent commercial connection with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceeding
The registration agreement is in Chinese. As such, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted as the language of the proceeding. Having reviewed the evidence before the Panel, it is determined that English shall be the language of the proceeding. The following circumstances were taken into account in coming to the conclusion:
(1) The website resolved from the Disputed Domain Name is completely in English. The content is more likely than not directed at an English speaking audience. The Respondent is clearly conversant with English or has ready access to competent resources for dealing with English;
(2) The Complainant is unable to communicate in Chinese. Forcing the Complainant to use Chinese would likely lead to a delay in the proceedings and will be an increased burden on the Complainant;
(3) The Respondent has neither indicated a preference for any language nor responded to the Complaint. The Respondent has chosen not to participate in the proceeding; and
(4) No apparent benefit to the parties or the proceeding is foreseeable should the default language of the proceeding be maintained. On the other hand, maintaining the default language of the proceeding could lead to a delay in the proceedings and will be an increased burden on the Complainant.
The Complainant is required to establish the following 3 limbs of paragraph 4(a) of the Policy in order to succeed in the proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubts that the Complainant has rights in the trademark JACK WOLFSKIN on the evidence. The Disputed Domain Name incorporates the trademark JACK WOLFSKIN entirely. The lack of a space between the words “Jack” and “Wolfskin” is insignificant. The only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix “jackets”. This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant’s submission that the additional word “jackets” does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark JACK WOLFSKIN. Therefore, it is held that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. The first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent has no relationship with the Complainant and has not been authorized or licensed by the Complainant to use the trademark JACK WOLFSKIN. There is nothing in the evidence to suggest that the Respondent is known by the name “Jack Wolfskin”. On the other hand, the evidence shows that the Respondent is using the Disputed Domain Name to offer goods for sale under the trademark JACK WOLFSKIN.
The Panel is of the view that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden shifts to the Respondent and has not been discharged in view of absence of any response having been filed. The second limb of paragraph 4(a) is established.
C. Registered and Used in Bad Faith
The Panel is mindful of paragraph 4(b)(iv) of the Policy which identifies the following situation as one of bad faith registration and use:
“By using the domain name, [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The website resolved from the Disputed Domain Name evidently has behind it an objective for commercial gain. The use of the Complainant’s trademarks JACK WOLFSKIN and “Jack Wolfskin + paw device” on the website in association with goods covered by these trademarks indicates the Respondent’s intention to associate itself with the Complainant’s trademarks. The claim by the Respondent on the website that it is the “Official Jack Wolfskin Jackets Outlet Store” in the absence of any relationship with the Complainant is not capable of any other interpretation. The Respondent is clearly attempting to attract Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website.
The circumstances therefore support a finding of bad faith registration and use. The third limb of paragraph 4(a) is established.
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, <jackwolfskinjackets.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: July 30, 2012