WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Wuttke v. Xiao Ming
Case No. D2012-2329
1. The Parties
The Complainant is Thomas Wuttke of Quickborn, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Xiao Ming of Ellicott City, Alabama, United States of America.
2. The Domain Name And Registrar
The disputed domain name <wellensteynsale.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 27, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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.
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”).
The proceedings commenced on November 30, 2012. The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice of the Complaint to the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2012.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 9, 2013. 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.
Because the Registration Agreement is in English and the Respondent’s address is in the United States of America, the Panel accedes to the Complainant’s request that the language of the proceeding be English.
4. Factual Background (Undisputed Facts)
The Complainant is the founder of the textile manufacturing company Wellensteyn International GmbH & Co. KG, which is licensed by the Complainant to use numerous WELLENSTEYN marks owned by the Complainant, including German trademark no. 300 43 641 WELLENSTEYN registered on November 27, 2000 for goods and services in classes 25, 33 and 36 (the “Word Mark“) and German trademark no. 306 59 755 WELLENSTEYN and device (comprising the word “Wellensteyn” above shield with a cross superimposed upon it) (the “Device Mark“) registered on January 12, 2007 for goods in class 25.
Wellensteyn International GmbH & Co. KG is known for its jackets which are distributed by most known retailers in Germany, including over thirty “Wellensteyn Collection Stores”. In addition, Wellensteyn International GmbH & Co. KG offers its products online under the Word Mark at “www.wellensteyn.de” and “www.wellensteyn.com”, where the Device Mark appears in red and white in the top left corner of most pages.
The Domain Name was registered on October 30, 2012. It leads to a website featuring the Device Mark in red and white in the top left corner of most pages, offering clothing, including jackets, for sale in German and English under the WELLENSTEYN word mark.
5. Parties’ Contentions
The Domain Name is nearly identical to the Complainant’s WELLENSTEYN marks. The Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Respondent’s registration and use of the Domain Name constitutes infringement of the Complainant’s trademarks. There is no indication that the Respondent owns any trademark, trade name or other rights in “Wellensteyn”. The Respondent has no relationship with and is not licensed or otherwise authorized by the Complainant or Wellensteyn International GmbH & Co. KG to use the Complainant’s trademarks. In particular, the Respondent is not an authorized dealer. The Complainant must assume that the products labelled “Wellensteyn” offered at the Respondent’s website are counterfeits.
Due to the identical products and the identical designations and devices displayed on the Respondent’s website, Internet users would conclude that the Complainant is the operator of the online-shop and the seller of the products and/or the owner of the Domain Name or, at least, that the Respondent is affiliated with the Complainant.
As to bad faith, it follows from the foregoing that the Domain Name was registered exclusively for the purpose of exploiting the good reputation of the Complainant and its trademarks and the “Wellensteyn” products. The Respondent has intentionally attempted to attract Internet users for commercial gain by leading them to the Respondent’s web-shop, by creating a likelihood of confusion with the Complainant’s marks.
The Complainant cites Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809 (<wellensteynjacken.com>), Thomas Wuttke v. Lin Yali/ Domains by Proxy, Inc., WIPO Case No. D2011-2050 (<wellensteynjacken.info>), and Thomas Wuttke v. wang qi ming, WIPO Case No. D2012-0608 (<wellensteyn-jacken.com>) in which the UDRP panels held that the registration of domain names including the term “Wellensteyn” and their use to offer jackets bearing the Complainant’s WELLENSTEYN marks indicate the bad faith of the respondent.
The Complainant seeks transfer to it of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Under the Policy, paragraph 4(a), the Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Respondent registered and is using the Domain Name in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The Complainant has produced registration certificates demonstrating that it clearly has rights, inter alia, in the Word Mark and in the Design Mark. The Domain Name is not identical to either of those marks since it contains the additional word “sale”. The top level domain “.com” is typically to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The test of confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The content of a respondent’s website is generally disregarded (A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgenson, WIPO Case No. D2001-0900) unless that content might indicate an intention on the part of the respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn: RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.
Here the addition to the Complainant’s trademark WELLENSTEYN of the descriptive word “sale“ does nothing to detract from the distinctiveness of the Complainant’s mark. This alone justifies a finding of confusing similarity. Further, in this case the content of the Respondent’s website appears designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant.
The Panel finds the Domain Name to be confusingly similar to the Complainant’s WELLENSTEYN mark. Since the word “Wellensteyn“ is the dominant feature of the Complainant’s Design Mark, the Panel finds the Domain Name also to be confusingly similar to that mark. The Complainant has established this element.
B. Rights or Legitimate Interests
The Panel accepts that the Word Mark and the Design Mark are distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of the absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
As mentioned, the content of the Respondent’s website appears designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant. The website is presented as if it were an official website of the Complainant or its licensee. “Use which intentionally trades on the fame of another cannot constitute a “ bona fide” offering of goods or services”: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (<madonna.com>).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products offered on its website. Under paragraph 4(b) of the Policy this shall be evidence of both the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
The Complainant has established this element.
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 <wellensteynsale.com> be transferred to the Complainant.
Alan L. Limbury
Date: January 13, 2013