WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Domain Admin, Whoisprotection.cc, Michelle Kuster, and Christian Jager

Case No. D2021-1046

1. The Parties

Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Germany, represented by SILKA AB, Sweden.

Respondent is Domain Admin, Whoisprotection.cc, Malaysia (“Respondent No. 1”), Michelle Kuster, Germany (“Respondent No. 2”), and Christian Jager, Germany (“Respondent No. 3”) (together “Respondents”).

2. The Domain Names and Registrars

The disputed domain names <jackwolfskinfi.com> and <jackwolfskinusasale.com> are registered with Mat Bao Corporation.

The disputed domain name <jackwolfskinosterreich.com> is registered with Gransy, s.r.o. d/b/a subreg.cz.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 7, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 8, 2021, the Registrar Gransy, s.r.o. d/b/a subreg.cz transmitted by email to the Center its verification response confirming that Respondent No. 1 is listed as the registrant for <jackwolfskinosterreich.com. On April 12, 2021, the Registrar Mat Bao Corporation transmitted by email to the Center its verification response disclosing the registrants and contact information for the disputed domain names <jackwolfskinfi.com> and <jackwolfskinusasale.com> which differed from the named Respondent and contact information in the Complaint. The Center sent a deficiency notification regarding the naming in the Complaint of the registrar Gransy, s.r.o. d/b/a subreg.cz on April 28, 2021 with regard to the disputed domain name <jackwolfskinosterreich.com>. The Center also sent an email communication to Complainant on April 28, 2021, providing the registrant and contact information disclosed by the Registrar Mat Bao Corporation, and requesting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. Complainant filed an amendment to the Complaint on April 28, 2021.

The Registrars also indicated that the language of the Registration Agreement for <jackwolfskinfi.com> and <jackwolfskinusasale.com> is Vietnamese and for <jackwolfskinosterreich.com> is English and Czech. Since the Complaint was filed in English, the Center sent an email communication to Complainant on May 11, 2021, inviting Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Vietnamese, or a request for English to be the language of proceedings. Complainant filed a request for English to be the language of proceedings on May 13, 2021. Respondents did not submit any arguments.

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 and 4, the Center formally notified Respondents of the Complaint in English and in Vietnamese, and the proceedings commenced on May 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 8, 2021.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 16, 2021. 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 company organized under the laws of Germany that is active in the outdoor equipment industry.

Complainant has provided evidence that it is the owner of numerous trademark registrations relating to its company name and brand “Jack Wolfskin”, inter alia, the following:

- Word mark JACK WOLFSKIN, German Trademark and Patent Office (DPMA), registration number: 1049490, registration date: June 8, 1983, status: active;
- Word/device mark JACK WOLFSKIN, International Registration, registration number: 509992, registration date: November 11, 1986, status: active;
- Word/device mark JACK WOLFSKIN, European Union Intellectual Property Office (EUIPO), registration number: 001161272, registration date: September 19, 2000, status: active.

Moreover, Complainant has demonstrated to own various domain names relating to its JACK WOLFSKIN trademark, inter alia, the domain name <jackwolfskin.com>, which redirects to Complainant’s official website at “www.jackwolfskin.com”, used to promote Complainant’s outdoor products and related services worldwide.

Respondents, according to the disclosed WhoIs information for the disputed domain names, registered the disputed domain name <jackwolfskinfi.com> on November 30, 2020 (Respondent No. 3), the disputed domain name <jackwolfskinosterreich.com> on January 5, 2021 (Respondent No. 1), and the disputed domain name <jackwolfskinusasale.com> on November 12, 2020 (Respondent No. 2), respectively. While the disputed domain name <jackwolfskinosterreich.com> apparently does not redirect to any valid content on the Internet, the disputed domain names <jackwolfskinfi.com> and <jackwolfskinusasale.com> are used to run websites offering outdoor products bearing Complainant’s JACK WOLFSKIN trademark for online sale, thereby promoting Complainant’s official logo as well as official pictures of Complainant’s products.
Complainant requests that the disputed domain names be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant recites that it was founded back in 1981 in Germany and that it today is one of the biggest suppliers of outdoor products, the result being a widespread reputation of Complainant’s JACK WOLFSKIN trademark in the fashion industry. Complainant submits that the disputed domain names are confusingly similar to Complainant’s JACK WOLFSKIN trademark, as they incorporate the latter entirely, with the geographical terms “fi”, “osterreich”, and “usa” as well as the term “sale” not allowing the disputed domain names to be differentiated from Complainant’s JACK WOLFSKIN trademark. Moreover, Complainant asserts that Respondents have no rights or legitimate interests in respect of the disputed domain names since (1) they are not authorized or licensed dealers or official partners of Complainant’s products or services, and (2) they registered the disputed domain names in order to prevent Complainant from exercising its own legitimate rights over the well-known JACK WOLFSKIN trademark. Finally, Complainant argues that Respondents have registered and are using the disputed domain names in bad faith since (1) Complainant has a widespread reputation in its JACK WOLFSKIN trademark worldwide, and it is highly unlikely that Respondents were unaware of Complainant’s trademark rights at the time of the registration of the disputed domain names, (2) the disputed domain name <jackwolfskinusasale.com> is used to run a website displaying Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission to do so, while the disputed domain name <jackwolfskinosterreich.com> resolves to an indexed site with links to other well-known trademarks, and finally (3) the disputed domain name <jackwolfskinfi.com> is not resolving to any content, but passively held.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.

Respondents’ default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondents do not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondents’ failure to submit a Response as it considers appropriate.

A. Consolidation

Given that all three disputed domain names have been set up in a very similar manner (by combining Complainant’s trademark JACK WOLFSKIN with a geographical term/country identifier and in one case the term “sale”) and given that they were initially registered through the same registrar, and so in a very close temporal link, thereby noting the failure of Respondent’s to claim otherwise, it is reasonable to argue that the disputed domain names are subject to common control which is why it is also fair and equitable to all parties that this Complaint is consolidated against multiple respondents at the same time, thereby also recognizing that none of the Respondents replied to Complainant’s contentions including the request for consolidation of April 28, 2021 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).

B. Language of Proceedings

Moreover, the Panel has decided, in accordance with the Complainant's request of May 13, 2021, to accept English as the language of the proceedings. Notwithstanding the fact that, according to the confirmation of the Registrars, the language of the Registration Agreement for the disputed domain names <jackwolfskinfi.com> and <jackwolfskinusasale.com> is Vietnamese, while for the disputed domain name <jackwolfskinosterreich.com> is English and Czech, the Panel may deviate, in accordance with paragraph 11 of the Rules of Procedure, from the language of the registration agreement, depending on the circumstances of the individual case. In the present case, which has been consolidated against multiple Respondents, it must be recognized that (1) English is the standard language of proceedings for at the least the disputed domain name <jackwolfskinosterreich.com> anyhow, (2) the English language is incorporated into the disputed domain name <jackwolfskinusasale.com> by including the English terms “usa” and “sale”, and the website operated under this disputed domain name is set up in the English language, (3) none of the three disputed domain names include a country-code Top-Level Domain (ccTLD), but are all “.com” domain names which typically aim at being used in an international context, and finally (4) there is no other language that would link the three Respondents and/or the three disputed domain names more obvious than English. Against this background, this Panel finds that it is appropriate and in the interest of all parties to conduct these proceedings in English without causing a disproportionate burden for any of Respondents who did not reply to any of the communication addressed to them whatsoever.

Having said so, the Panel comes to the following decision:

C. Identical or Confusingly Similar

The Panel concludes that all disputed domain names are confusingly similar to the JACK WOLFSKIN trademark in which Complainant has rights.

The disputed domain names all incorporate the JACK WOLFSKIN trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g., geographic or descriptive) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition in the disputed domain names of geographic terms such as “fi” (the two-letter-code for “Finland”), “usa” (for the United States) and “osterreich” (German for Austria) on the one hand as well as the term “sale” on the other hand, does not dispel the confusing similarity arising from the incorporation of Complainant’s JACK WOLFSKIN trademark in all disputed domain names.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

D. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondents have not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor have Respondents been commonly known by the disputed domain names, nor can it be found that Respondents have made a legitimate noncommercial or fair use thereof without intent for commercial gain.

None of the Respondents have been authorized to use Complainant’s JACK WOLFSKIN trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondents’ names somehow correspond with the disputed domain names and Respondents do not appear to have any trademark rights associated with the term “jack wolfskin” on their own. To the contrary, Respondent(s) obviously run websites under the disputed domain names <jackwolfskinfi.com> as well as <jackwolfskinusasale.com> which purport to offer for sale Complainant’s “Jack Wolfskin” outdoor products, thereby displaying Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission to do so. The Panel recognizes that it is open if the goods offered under these disputed domain names are original or fake “Jack Wolfskin” products. But even if those products were originals, apart from imitating Complainant’s official website, Respondent(s) obviously do not disclose, neither accurately nor prominently, the non-existing relationship with Complainant as the JACK WOLFSKIN trademark holder, and, therefore, may not claim any nominative fair use of the disputed domain name, neither as authorized nor as unauthorized resellers of Complainant’s JACK WOLFSKIN products (see the so-called “Oki Data test”, WIPO Overview 3.0, section 2.8.1). Moreover, as far as the disputed domain name <jackwolfskinosterreich.com> is concerned, it appears that by the time of the rendering of this decision, this disputed domain name does not resolve to any active content on the Internet. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).

Accordingly, Complainant has established a prima facie case that Respondents have no rights or legitimate interests in respect of in the disputed domain name. Now, the burden of production shifts to Respondents to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondents have defaulted, Respondents have not done so.

The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

E. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondents in bad faith.

As for the disputed domain name <jackwolfskinusasale.com> as well as the disputed domain name <jackwolfskinfi.com>, the circumstances to this case leave no doubt that Respondents were fully aware of Complainant’s rights in the JACK WOLFSKIN trademark (noting its claimed worldwide recognition) when registering these disputed domain names and that the latter are clearly directed to this trademark. Moreover, using these disputed domain names, which are confusingly similar to Complainant’s JACK WOLFSKIN trademark, to run websites which purport to offer for sale Complainant’s “Jack Wolfskin” outdoor products, thereby displaying Complainant’s official trademark and logo as well as official pictures of products possibly obtained from the Complainant’s website without its permission to do so, is a clear indication that Respondents intentionally attempted to attract, for commercial gain, Internet users to their own websites by creating a likelihood of confusion with Complainant’s JACK WOLFSKIN trademark as to the source, sponsorship, affiliation or endorsement of the related websites. Such circumstances are evidence of registration and use of these disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Moreover, as for the disputed domain name <jackwolfskinosterreich.com>, following a general rule, UDRP panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the disputed domain names may be put. Complainant contends, and Respondents have not challenged this contention, that its JACK WOLFSKIN trademark enjoys a widespread reputation in the fashion industry. Besides, this Panel has no reasonable doubts that Respondent No. 1, too, was well aware of Complainant and its JACK WOLFSKIN trademark when registering the disputed domain name <jackwolfskinostereich.com>, and that the latter is directly pointing thereto. By the same time, the circumstances to the case at hand leave no room for any plausible use of this disputed domain name, which would not take unfair advantage by profiting from the undisputed reputation, which Complainant’s JACK WOLFSKIN trademark enjoys. Against this background, the passive holding of the disputed domain name <jackwolfskinostereich.com> is not in contrast to still hold the disputed domain name <jackwolfskinosterreich.com> has been registered and used in bad faith within the meaning of paragraph 4(b) of the Policy.

Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 names <jackwolfskinfi.com>, <jackwolfskinosterreich.com>, and <jackwolfskinusasale.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: June 28, 2021