WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. Sharing / Whois Privacy Protection Service Inc. and Jason Lau
Case No. D2012-1188
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Idstein/ Taunus, Germany, represented by Harmsen Utescher of Hamburg, Germany.
The Respondent is Sharing / Whois Privacy Protection Service Inc. and Jason Lau of Bellevue, United States of America and Fuzhou, China, respectively.
2. The Domain Name and Registrar
The disputed domain name <jack-wolfskinjacken.com> (the "Domain Name") is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2012. On June 12, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On June 12, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2012 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 June 26, 2012.
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 June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 25, 2012.
The Center appointed Ian Lowe 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 is one of the leading producers of outdoor and sporting apparel and equipment in Germany, Europe and Asia, especially clothing, footwear and headgear. It has produced and sold such goods for more than 25 years under the trademark JACK WOLFSKIN.
The Complainant is the owner of numerous trademark registrations for the term “Jack Wolfskin”, including German Trademark No. 1049490 JACK WOLFSKIN registered as of August 23, 1982, Community Trademark No. 6733208 JACK WOLFSKIN registered as of March 6, 2008 and International Registrations No. 629193 JACK WOLFSKIN and No. 643936 JACK WOLFSKIN, designating inter alia the territory of China registered in 1994 and 1995. It also owns Community Trademark No. 3034915 JACK WOLFSKIN and paw device registered as of January 31, 2003
The Domain Name was registered on November 14, 2011. At the date of the Complaint, it resolved to a website offering for sale clothing and footwear under the Jack Wolfskin trademarks.
5. Parties’ Contentions
A summary of the contentions on the part of the Complainant is as follows.
The Complainant notes that the Domain Name comprises the entirety of its JACK WOLFSKIN trademark together only with the word "jacken" which means "jacket" in English. It submits that this is not sufficient to distinguish the Domain Name from the Complainant's registered trademarks and that the Domain Name is therefore confusingly similar to the trademark JACK WOLFSKIN.
The Complainant maintains that there is no evidence that the Respondent has any right or legitimate interest in the Domain Name. The Respondent is to the best of the Complainant’s knowledge, not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant and has not otherwise obtained any authorization from the Complainant to use the sign “Jack Wolfskin” or to register the Domain Name incorporating the Complainant’s trademarks. The Respondent has not registered the Domain Name for a bona fide reason or made any bona fide use of the disputed domain name.
In addition, the Complainant points out that the Respondent uses <jack-wolfskinjacken.com> for commercial purposes by way of operating a Web-shop, intentionally leading consumers to the false impression that this Web-shop is operated by the Complainant.
The Complainant submits that the Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks and trade name JACK WOLFSKIN. Therefore, the Domain Name was registered and is being used in bad faith. The Respondent intentionally attempts to attract for commercial gain by leading Internet users to his Web-shop, selling clothing on the website, thus creating a likelihood of confusion with the Complainant’s trademarks. Moreover, the Respondent uses the wording “Powered by Jack Wolfskin” at the bottom of the home page of the website intentionally creating the false impression that the website is operated by the Complainant or a person connected to the Complainant. This is not the case. The Complainant has nothing to do with the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trademark JACK WOLFSKIN with the insertion of a hyphen and the word “jacken” which is the German word for “jacket”. The Panel is entitled to ignore the hyphen. The addition of the word “jacken” does not detract from the distinctiveness of the Complainant’s mark. Since it is a description both of the goods of the Complainant and of the goods offered for sale on the website to which the Domain Name resolves, in the opinion of the Panel, it rather adds to the confusing similarity between the Domain Name and the Complainant’s mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The pages of the website to which the Domain Name resolves, annexed to the Complaint, show a range of shirts and jackets offered for sale under the JACK WOLFSKIN mark. Each garment is described, for example, as “Jack Wolfskin Women Serpentine Jacket”. The pages are headed with the mark JACK WOLFSKIN and feature also the paw elements of the Complainant’s device mark.
The Complaint does not, however, make any allegation that the clothing being offered for sale is counterfeit. The Complaint is also silent about any evidence as to the operator of the Website. So far as the evidence before the Panel is concerned the operator of the website may be acting as a reseller of genuine goods of the Complainant.
As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) records, the consensus view amongst panelists is that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements. However, these requirements normally include not only the actual offering of goods and services at issue and the use of the Website to sell only the trademarked goods, but also that the Website accurately and prominently discloses the registrant's relationship with the trademark holder.
In this case, rather than make its true status clear, the home page of the website includes the statement “© Jack Wolfskin Jacken” and “Powered by Jack Wolfskin”. The Complainant states categorically that there is no relationship between the Respondent and the Complainant and that the Complainant has no connection with the website or its offering.
The Respondent has chosen not to respond to the Complaint or to refute the contentions made by the Complainant. Far from making any legitimate interest clear, the Panel considers that the statements on the website are intended to suggest that the website is operated by the Complainant or that it is authorised by the Complainant. On the uncontroverted evidence of the Complainant this is not the case. The Respondent has not come forward with any explanation as to what rights or legitimate interests it may have in respect of the Domain Name. In the circumstances, even if the Respondent’s website is a genuine website offering the genuine goods of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Respondent is using the Domain Name for a website apparently offering for sale jackets and other garments under the JACK WOLFSKIN mark. In the view of the Panel, it is therefore inconceivable that the Respondent did not have the Complainant’s mark in mind when it registered the Domain Name. In light of the Panel’s reasoning above as to the absence of any legitimate interests in respect of the Domain Name on the part of the Respondent, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <jack-wolfskinjacken.com>, be transferred to the Complainant.
Dated: August 11, 2012