WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. Mike Willer
Case No. D2014-0094
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Idstein, Germany, represented by Harmsen.Utescher, Germany.
The Respondent is Mike Willer of Burundi.
2. The Domain Name and Registrar
The disputed domain name <jackwolfskin-tmall.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2014. On January 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2014, 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 January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 26, 2014. 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 the owner, amongst others, of the following trademark registrations:
- German Trademark registration No. 1049490 for JACK WOLFSKIN filed on August 23, 1982 and registered on June 8, 1983, to cover products in classes 20, 22 and 25 (Annex 3 to the Complaint);
- Community Trademark registration No. 006733208 for JACK WOLFSKIN filed on March 6, 2008 and registered on May 20, 2009, to cover products and services in classes 1, 3, 9, 16, 18, 21, 22, 24, 25, 27, 28, 35, 41, 42 and 45 (Annex 3 to the Complaint), and
- International Trademark registration No. 629193 for JACK WOLFSKIN registered on November 4, 1994, to cover products in classes 18, 20, 22 and 25 (Annex 3 to the Complaint).
The disputed domain name <jackwolfskin-tmall.com> was registered on October 8, 2012. Currently no active website resolves to the disputed domain name.
5. Parties’ Contentions
The Complainant alleges that it is one of the leading producers of outdoor and sporting apparel and equipment in Europe and Asia having acquired throughout the world a reputation for its high-quality innovative products which are all labeled with the JACK WOLFSKIN trademark.
The Complainant further asserts that the disputed domain name reproduces its registered trademark JACK WOLFSKIN (Annex 3 to the Complaint) merely adding the suffix “tmall” to it. Such element, in the Complainant’s view is purely descriptive for a business website in China that relates to online retail and thus solely highlights the Complainant’s trademark it is combined with.
Moreover, the website that resolves to the disputed domain name offers identical clothing, footwear and headgear products also reproducing the Complainant’s logo, thus creating a false impression that such website is operated by the Complainant or by someone related to the Complainant, what is not the case.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”;
(ii) the Respondent is not a licensee nor has he otherwise obtained any authorization from the Complainant to use the JACK WOLFSKIN trademark; and
(iii) the Respondent has not used, is not using and has not shown any intention of using the domain name in connection with a good faith offering of goods and services.
Furthermore, the Complainant asserts that the website relating to the disputed domain name has been used for the sale of goods which are identical and highly similar to the Complainant’s products, indeed offering counterfeit products for sale on the Respondent’s website (Annex 4 to the Complaint).
Such use by the Respondent characterizes, in the Complainant’s view, a deliberate effort to confuse Internet users thus taking advantage from the Complainant’s trademark and reputation. The Respondent’s use of the disputed domain name should therefore be considered illegitimate and unfair, with the intent for commercial gain by misleadingly diverting consumers or tarnishing the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the JACK WOLFSKIN trademark, duly registered in Germany, the European Union and other countries (Annex 3 to the Complaint).
In this Panel’s view the suffix “tmall” in the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant’s mark given that such element is indeed used in China in connection to online retail and thus can create confusion or undue association in Internet users between the disputed domain name and the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted Respondent to use the JACK WOLFSKIN trademark in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
According to the print-outs of the website at the disputed domain name (Annex 4 to the Complaint) the disputed domain name was used for the sale of goods which are identical and highly similar to Complainant’s products. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be evidenced by the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with the sale of goods which are identical and highly similar to Complainant’s products, can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
For the reasons stated above, this Panel is satisfied that the Respondent has registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) 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 <jackwolfskin-tmall.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: March 12, 2014