WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Luigii Cardinaee
Case No. D2015-2087
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Luigii Cardinaee of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <jack--wolfskin.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 17, 2015. On November 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 2015, 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 sent an email communication to the Complainant on November 23, 2015 requesting a clarification of the Respondent's name and email address. The Complainant filed an amended Complaint on November 23, 2015.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2015.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 22, 2015. 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 of several trade mark registrations for the term "Jack Wolfskin", including:
- German trade mark No. 1049490 JACK WOLFSKIN, registered on June 8, 1983; with a priority of August 23, 1982,
- Community trade mark No. 6733208 JACK WOLFSKIN, registered on May 20, 2009; with a priority of March 6, 2008,
- International trade mark. no. 629193 JACK WOLFSKIN, registered on November 4, 1994,
- International trade mark no. 643936 JACK WOLFSKIN, registered on June 1, 1995,
together hereafter referred to as the "Trade Marks".
The Complainant is a producer of outdoor and sporting apparel and equipment (especially clothing, footwear and headgear) which is sold in Europe, America and Asia.
The Domain Name was registered on September 23, 2015.
5. Parties' Contentions
The Complainant submits that the Domain Name is identical to the Trade Marks. It states that it is one of the leading producers of outdoor and sporting apparel and equipment in Germany, Europe, America and Asia and that it has acquired an outstanding reputation for high-quality innovative products, while all goods of the Complainant are labeled with the Trade Marks.
According to the Complainant, the Respondent has no rights or legitimate interests with respect to the Domain Name. To the best of the Complainant's knowledge, the Respondent is not entitled to any trade mark, trade name or any other right in the name "Jack Wolfskin". Furthermore, the Complainant states that there is no relationship between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant nor has it otherwise obtained any authorization from the Complainant to use the sign "Jack Wolfskin" or to register the Domain Name incorporating the Trade Marks. The Complainant also points out that the Respondent has not registered the Domain Name for a bona fide reason nor has it made any bona fide use of the Domain Name. The use of the Trade Marks by way of registering a nearly identical domain name, according to the Complainant constitutes an infringement of the Trade Marks since the Respondent is not the owner of any trade mark, trade name or any other right in the name "Jack Wolfskin".
Moreover, the Complainant submits that the Respondent uses the Domain Name for commercial purposes by way of advertising clothing articles, intentionally leading the consumers to the false impression that this web-shop is operated by the Complainant. The Complainant further states, on the basis of a print which allegedly features the homepage of the website connected to the Domain Name, that the Respondent uses the Domain Name for the offer of identical products (such as clothing, footwear and headgear) in connection with the Trade Marks and the device mark "Jack Wolfskin + paw device". According to the Complainant, the Respondent, thus creates intentionally the false impression that the website under the Domain Name is operated by the Complainant or a person connected to the Complainant.
The Complainant states that it follows from the foregoing that the Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant, the Trade Marks and the trade name "Jack Wolfskin". The Complainant also alleges that the Respondent intentionally attempts to attract for commercial gain by way of leading Internet consumers to his homepage under the Domain Name, advertising clothing articles on this website and, thus, creating a likelihood of confusion with the Trade Marks.
Therefore, the Complainant concludes, the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
At the outset, the Panel wishes to emphasize that the burden of proof for the three elements under the UDRP is on the Complainant. This is equally so, if the Respondent, as in the present case, does not reply to the Complaint. As set out in the WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0") under paragraph 4.6, "a respondent's default does not automatically result in a decision in favor of the complainant. […] The complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding". In addition, as set out in paragraph 4.7 of WIPO Overview 2.0, the standard of proof under the UDRP requires that "an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient."
The Panel notes that the evidence submitted by the Complainant of the alleged lack of a legitimate reason or own right and of bad faith registration and use consists of a two page print of a website that was allegedly at some stage connected to the Domain Name. The Panel notes that this print does not show the URL of the website, nor the date on which it was made. The Panel further notes that the print on page 2 at the bottom carries a copyright notice stating "Copyright © 2013 Jack Wolfskin Outlet Online Store", that one of the download options is "Winter Catalogue 2013", while the Domain Name was registered on September 23, 2015.
When the Panel checked the URL for the Domain Name, there was no website connected to it. The Panel also consulted the Internet Archive under <waybackmachine.org> for websites connected to the Domain Name which yielded one result, dated November 15, 2013, showing a Chinese language webpage with the "Jack Wolfskin" name and logo and pictures of outdoor clothing, back packs and footwear.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade Marks.
The Trade Marks consist of or contain the name "Jack Wolfskin", which is incorporated in its entirety in the Domain Name. The addition of a 'double dash' between "Jack"and "Wolfskin" does not change the overall impression that the Domain Name is nearly identical to the Complainant's Trade Marks The generic code Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the Panel finds that the Domain Name is identical or, in any case, confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
Since it is in general difficult, if not impossible, to prove a negative (i.e., that the Respondent lacks any rights or legitimate interests in the mark) - especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since paragraph 4(c) of the Policy describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light (see e.g., De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002‑0005). It follows that the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). If the Complainant meets this requirement and the Respondent enters no response the required evidence is deemed to have been provided (see e.g. De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
This requires that in this case the Complainant states and (to the extent possible with respect to negative evidence) provides supporting documents to the effect that the Respondent does not have an own trade mark or other right corresponding to the Domain Name, was not authorized by the Complainant to use or register a domain name containing the Trade Marks and did not (i) use or prepare to use the Domain Name in connection with a bona fide offering of goods or services before it was notified of the dispute; nor (ii) as an individual, business, or other organization has been commonly known by the Domain Name; nor (iii) 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 Trade Marks.
For this purpose the Complainant has put forward that (1) the Respondent is not entitled to any trademark, trade name or any other right in the name "Jack Wolfskin"; (2) there is no relationship between the Respondent and the Complainant; and (3) the Respondent is not a licensee of the Complainant nor has it otherwise obtained any authorization from the Complainant to use the sign "Jack Wolfskin" or to register the Domain Name incorporating the Trade Marks.
As no response has been filed, these statements have remained uncontested.
The Complainant further states that the Respondent uses the Domain Name for a website where it offers identical products, while using the Trade Marks and the device mark "Jack Wolfskin + paw device", thereby intentionally creating the false impression that this website is operated by the Complainant or a person connected to the Complainant. Although the print of the alleged website provided in support of this statement is, as set out above, is inconclusive evidence in view of a number of discrepancies between this print and the facts, established by the Panel, while supporting evidence has not been submitted, the statements of the Complainant have not been contested by the Respondent who failed to file a Response.
In the context of this case, as these statements are not inherently implausible, the Panel accepts them as facts. In view of these uncontested statements, the Panel cannot conceive of a good faith use of the Domain Name which incorporates the Trademarks.
On the basis of all of the above the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Evidence of bad faith registration may be found if the Complainant shows that at the time of the registration of the Domain Name the Respondent knew or was aware of the Complainant's rights in the Trade Marks (WIPO Overview 2.0, under paragraph 3.4). Although the Complainant has not provided supporting evidence of its statement that it is one of the leading producers of outdoor and sporting apparel and equipment in Europe and that all its goods are labeled with the Trade Marks, these statements have remained uncontested by the Respondent and are therefore accepted as facts by the Panel. Furthermore, one of the Trade Marks has been registered for the European Union (including Italy, where the Respondent is domiciled according to the WhoIS information). In addition, the name "Jack Wolfskin", which is incorporated in its entirety in the Domain Name, is not a name that a person wishing to register a domain name would accidently think of.
On these grounds, the Panel assumes that at the time of the registration of the Domain Name the Respondent was or should have been aware of the Trade Marks.
Furthermore, a simple trade mark register search prior to the registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With respect to bad faith use, the Panel again notes that the Complainant's statements have remained uncontested. This implies that the Panel accepts that the Respondent uses (or at least has used in the past) the Domain Name for a website offering identical products to those sold by the Complainant under the Trade Marks, while displaying on that website the Trade Marks and the trade mark "Jack Wolfskin + paw device". As the Complainant has not authorized the Respondent to use the Trade Marks, and the Respondent has not shown that it was otherwise allowed to use the Trade Marks as it did, the Panel concludes that the Respondent thereby intentionally created the false impression that this website is operated by the Complainant or a person connected to the Complainant. This also indicates that the Domain Name has been or is being used for commercial gain, by attracting Internet users to a website of the Respondent through the likelihood of confusion which may arise with the Trade Marks, as to, for example, the source, sponsorship, affiliation or endorsement of the website of the Respondent or of products or services on the Respondent's website.
On the basis of the above, the Panel concludes that the Domain Name has been registered and is being used 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--wolfskin.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: January 3, 2016