WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. attraction mich
Case No. D2013-1374
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Idstein, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is attraction mich of Ehime, Japan.
2. The Domain Name and Registrar
The disputed domain name <jackejackwolfskin.com> 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 August 2, 2013. On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2013, 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”).
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 August 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2013.
The Center appointed Petter Rindforth as the sole panelist in this matter on September 11, 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language, which is the language of the Registration Agreement.
4. Factual Background
The Complainant is a producer of outdoor and sporting apparel and equipment in Germany, Europe and Asia, and is the owner of a number of trademark registrations for JACK WOLFSKIN, including
- German Registration No. 1049490 JACK WOLFSKIN, registered on June 8, 1983, in respect of goods in classes 20, 22 and 25;
- International Registration No. 643936 JACK WOLFSKIN, registered on June 1, 1995, in respect of goods in classes 18, 22, 25 and 28;
- Community Trademark Registration No. 3034915 JACK WOLFSKIN & Device, registered on February 7, 2005 in respect of goods and services in classes 1, 3, 18, 21, 22, 24, 25, 27, 28, 35, 41 and 42.
The disputed domain name <jackejackwolfskin.com> was registered on May 27, 2013. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant, being on the market for more than 25 years, states that the Complainant is one of the leading producers of outdoor and sporting apparel and equipment in Germany, Europe and many other states throughout the world. All goods of the Complainant are labeled with the trademark JACK WOLFSKIN.
The Complainant asserts that the disputed domain name is nearly identical to the trademark JACK WOLFSKIN. The additional element “jacke” (a German word for “jacket”) is descriptive for the goods distributed via the website connected to the disputed domain name. Also, the web site use the JACK WOLFSKIN & Device mark, as well as a copyright note, on the website implies that it is operated by the Complainant or a person connected to the Complainant.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name <jackejackwolfskin.com>. The Complainant has not given the Respondent any license or other permission to use the trademark or the disputed domain name, and there is no evidence that the Respondent is making any legitimate non-commercial or fair use of <jackejackwolfskin.com>.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name <jackejackwolfskin.com> was registered exclusively for the purpose of exploiting the reputation of the Complainant and its trademark, and the Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to the Respondent’s web-shop under <jackejackwolfskin.com>, creating a likelihood of confusion with the Complainants trademarks. Moreover, the Respondent even betrays the Internet consumers by way of pretending a not existing commercial connection to the Complainant.
The Complainant requests that the Panel order that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of a number of trademark registrations for JACK WOLFSKIN (word and device), including the German national trademark registration No 1049490 JACK WOLFSKIN, registered on June 8, 1983.
The relevant part of the disputed domain name is “jackejackwolfskin”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Panel concludes that the disputed domain name consists of the Complainant’s trademark JACK WOLFSKIN, written as one word, and with the addition of the generic word “jacke”. This does not preclude a finding of confusingly similarity between the trademark and the disputed domain name. For pure technical reasons, there are only two ways to create a domain name based on a two worded trademark: either to write the two worded trademark with a hyphen, or – as in this specific case – combine the two words into one. Further, addition of a generic word may even add to the confusing similarity. See Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’ or […] is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”; see also Bang & Olufsen a/s v. BlueHost.com- INC , and Chris Albano, WIPO Case No. D2010-0406, “the minor change from Bang & Olufsen to bang-olufsen, and the addition of the generic word ‘outlet’, as a suffix after the words ‘bang-olufsen’, in the Domain Name, does little to distinguish the Domain Name from the Trade Mark, and the likelihood of confusion between the Domain Name and the Trade Mark is high”; see also Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. WhoisGuard/Edison Pitt, WIPO Case No. D2013-0645 (<jackwolfskinjacke.com>).
In this case, “jacke” (the German word for “jacket”) is a direct reference to the goods covered by the JACK WOLFSKIN trademark and therefore clearly refers to the Complainant’s registered trademark.
The Panel therefore concludes that <jackejackwolfskin.com> is confusingly similar to the Complainant’s trademark JACK WOLFSKIN.
B. Rights or Legitimate Interests
Once the complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case under the same paragraph of the Policy.
The Respondent has no rights to use the Complainant’s trademark and is not an authorized agent or licensee of the Complainant’s products, services or trademarks.
As shown by the Annex 4 of the Complaint, the Respondent is using <jackejackwolfskin.com> for a website offering JACK WOLFSKIN market products. The website shows that the Complainant’s figurative version of JACK WOLFSKIN trademark and does not disclose the Respondent’s (lack of a) relationship with the Complainant. The Panel concludes that such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. See Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (stating that “the Respondent is not connected with the Complainant, but uses the Complainant’s mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favour of the Respondent”); see also Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540 (“The mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of the website the right to register a domain name incorporating another’s trademark”); see also Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade… off Complainant’s trademark… is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is a German based company, referring to a trademark registered within Germany, the European Union, and internationally (not covering Japan), whereas the Respondent’s home country is Japan.
However, it appears to the Panel that the disputed domain name is clearly referring to the Complainant, as it consists of the descriptive word “jacke” in the German language, followed by the trademark JACK WOLFSKIN.
Further, the disputed domain name is used for a website that refers to the Complainant’s goods in a way that the Panel concludes is a deliberate attempt to create a likelihood of confusion with the Complainant’s trademark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. The said website even shows the Complainant’s figurative version of the trademark JACK WOLFSKIN and further direct references to the Complainant. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant.
Thus, the Panel concludes that the disputed domain name was both registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <jackejackwolfskin.com> be transferred to the Complainant.
Date: September 23, 2013