WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Harindra Darmawan
Case No. D2012-1166
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Harindra Darmawan, Jawa Timur, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <jackwolfskinoutlet.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 7, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On June 8, 2012, GoDaddy.com, LLC 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 June 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2012.
The Center appointed Hariram Jayaram as the sole panelist in this matter on July 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 obtained registrations for the following trade marks:
- German Trade Mark Registration No. DE 1049490 for JACK WOLFSKIN in classes 20, 22 and 25;
- Community Trade Mark Registration No. 006733208 for JACK WOLFSKIN in classes 1, 3, 9, 16, 18, 21, 22, 24, 25, 27, 28, 35, 41, 42 and 45;
- Community Trade Mark Registration No. 002756500 for WOLFSKIN in classes 1, 20, 22, 25, 28, 39 and 41
- Community Trade Mark Registration No. 3034915 for JACK WOLFSKIN and PAW DEVICE in classes 1, 3, 18, 21, 22, 24, 25, 27, 28, 35, 41 and 42;
- International Registration No. 629193 for JACK WOLFSKIN in classes 18, 20, 22 and 25 designating countries China and Kazakhstan;
- International Registration No. 643936 for JACK WOLFSKIN in classes 18, 22, 25 and 28 designating countries Austria, China, Switzerland, Spain, Italy, Poland, Russia, Vietnam, the Democratic People’s Republic of Korea and the Benelux Office for Intellectual Property
The disputed domain name was registered on December 1, 2011.
5. Parties’ Contentions
The Complainant is one of the leading producers of outdoor and sporting apparel and equipment in Germany, Europe, and Asia. For more than 25 years, the Complainant has been dedicated to the production and sale of the aforementioned goods and has thus acquired an outstanding reputation for high-quality innovative products in Germany, Europe and many other states throughout the world. The product portfolio of the Complainant covers all kinds of outdoor equipment, especially clothing, footwear, and headgear. All goods of the Complainant are labeled with the trade mark JACK WOLFSKIN. The disputed domain name <jackwolfskinoutlet.info> is nearly identical to the aforementioned trade marks in which the Complainant owns exclusive rights. The domain name is extremely similar compared to the aforementioned JACK WOLFSKIN trade marks which are incorporated in full in the disputed domain name. The additional element “outlet” is obviously purely descriptive for a typical “outlet” store and, thus, not able to create a sufficient distance. The Respondent uses the disputed domain name for the offer of the Complainant’s identical products (e.g. “clothing, footwear, headgear”). The Respondent intentionally creates the false impression that the website under the disputed domain name is operated by the Complainant or a person connected to the Complainant. Neither is the case. The Complainant has nothing to do with the website associated with the disputed domain name. The disputed domain name is confusingly similar to the trade marks of the Complainant.
The Respondent is to the best of the Complainant’s knowledge, not entitled to any trade mark, trade name or any other right in the names “Wolfskin” or “Jack Wolfskin”. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorization from the Complainant to use the signs “Wolfskin” or “Jack Wolfskin” or to register the disputed domain name incorporating the Complainant’s trade marks. The Respondent has not registered the disputed domain name for a bona fide reason nor has he made any bona fide use of the disputed domain name. The use of the Complainant’s “Wolfskin” and “Jack Wolfskin” trade marks by way of registering a nearly identical domain name constitutes an infringement of the Complainant’s rights since the Respondent is not the owner of any trade mark, trade name or any other right in the names “Wolfskin” or “Jack Wolfskin”. The Respondent has no rights or legitimate interests with respect to the disputed domain name.
The disputed domain name was registered exclusively for the purpose of exploiting the reputation of the Complainant and its trade marks and trade name “Jack Wolfskin”. The disputed domain name was registered and is being used in bad faith. The Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to his web-shop by creating a likelihood of confusion with the Complainant’s trade marks. The Respondent even betrays the Internet consumers by way of pretending there is a commercial connection to the Complainant, when no such connection exists. Thus, the disputed domain name was obviously registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements to obtain an order for the domain name to be transferred to it:
- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the record before the Panel.
A. Identical or Confusingly Similar
The Complainant is the registered owner of the JACK WOLFSKIN trade mark in Germany, as well as both a Community Trade Mark and an International Registration. The Complainant manufactures and sells JACK WOLFSKIN branded outdoor equipment, especially clothing, footwear, and headgear. Apart from the generic top-level domain suffix “.info”, the disputed domain name incorporates the Complainant’s JACK WOLFSKIN trade mark in its entirety, followed by the suffix “outlet”, a commonly used generic term.
Several WIPO UDRP decisions have confirmed that the addition of such generic suffixes may actually increase the likelihood of association between the domain name and the said trade mark. Some of these cases are as follows:
In ebay, Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307 <ebaymoving.com>, the panel observed:
“It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks…”
In Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254 <arrypotterfilm.org> et al., the panel found:
”…the addition of geographical designations, generic or descriptive terms, or words designating the goods or services with which the mark is used do not alter the fact that the domain names are confusingly similar to the marks”
In a similar case involving the present Complainant, i.e., Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. v. Zhang Zhi Hong, WIPO Case No. D2012-0221, in which the domain name was <jack-wolfskinoutlet.com>, the panel held:
“…the mere addition of the [‘]-[’] in the middle the JACK WOLFSKIN mark, and addition of the descriptive term [‘]outlet[’] as a suffix to Complainant’s mark fails to distinguish the Domain Name from the trademark. By contrast, it may increase the likelihood of confusion. One of common meanings of the term [‘]outlet[’] is [‘]shop[’] or [‘]store[’] - an establishment where merchandise is sold, usually on a retail basis. Consumers who visit <jack-wolfskinoutlet.com> may be likely to be confused and may falsely believe that <jack-wolfskinoutlet.com> is operated by Complainant for selling Jack-Wolfskin branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Name and the JACK WOLFSKIN Marks in which Complainant has rights.”
The Panel agrees with the findings in the above decisions and concludes that the disputed domain name is confusingly similar to the Complainant’s JACK WOLFSKIN trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent is not entitled to any trade mark, trade name, or any other right in the names “Wolfskin” or “Jack Wolfskin”; that there is no relationship between the Complainant and the Respondent; that the Respondent is not a licensee of the Complainant; and that the Respondent has not received any authorization from the Complainant to use the marks WOLFSKIN orJACK WOLFSKIN. The Respondent, who did not file a Response, neither disputed these contentions nor provided information as to the Respondent’s possible rights or legitimate interests in the disputed domain name.
On the basis of the Complainant’s submissions and evidence at hand, the choice of words in the disputed domain name, and the apparent purposeful use of the disputed domain name to generate traffic to a web site selling goods similar to those of the Complainant, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is well-established that if a prima facie case is established, the burden of production shifts to the Respondent; if the Respondent fails to rebut the Complainant’s case, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.
The Panel finds that Respondent has failed to produce any evidence to establish any rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website which sells products similar to those of the Complainant, namely outdoor clothing and footwear, and offers sponsored advertisements linking to similar products sold at the website “www.amazon.de”. The products being sold on the website have titles which incorporate the JACK WOLFSKIN mark (e.g., “Jack Wolfskin Kids Iceland Jacke phantom”). Such use of the disputed domain name and the registration of the disputed domain name show that the Respondent is well aware of the business of the Complainant and that the disputed domain name has been created with the intention to reap commercial benefit generated through confusion and customer diversion. Given the reputation of the Complainant’s mark, as well as the sale of goods similar to those of the Complainant and the presence of the sponsored, it is implausible in this Panel’s view that the Respondent independently registered and used the disputed domain name without knowledge of the Complainant’s trade mark.
This is an obvious attempt to capitalize on the Complainant’s trade mark and, as alleged by the Complainant, to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA. v. Zhang Zhi Hong, WIPO Case No. D2012-0221, the panel found:
“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Name (in 2012)… Given the widespread reputation of the JACK WOLFSKIN Marks, the Panel finds that the public, particularly a consumer in Europe, is likely to be confused into thinking that the Domain Name <jack-wolfskinoutlet.com> has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Name is resolved. In other words, Respondent has through the use of a confusingly similar Domain Name created a likelihood of confusion with the JACK WOLFSKIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepages of the Domain Name, Internet users may be led to believe that the Domain Name is either of Complainant or of the official authorized partners of Complainant, which is not the case. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the Domain Name is used by Respondent in bad faith.”
In the absence of any explanation or rebuttal by the Respondent, it is apparent from the Complainant’s submissions that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that the 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 <jackwolfskinoutlet.info> be transferred to the Complainant.
Date: August 10, 2012