WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. Ming Cheng Liu, Liu Ming Cheng
Case No. D2016-2424
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Taunus, Germany, represented by Harmsen Utescher of Germany.
The Respondent is Ming Cheng Liu, Liu Ming Cheng of Shenyang, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <jackwolfskinoutlet.store> (“the Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2016. On November 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant’s contact information for the Domain Name which differed from the named Respondent’s contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 7, 2016.
On December 5, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 7, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 December 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on January 13, 2017. 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 one of the leading producers of outdoor and sporting apparel and equipment in Germany, Europe, America and Asia. It has been producing such goods under the trade mark JACK WOLFSKIN for more than 25 years.
The Complainant owns numerous trade mark registrations for JACK WOLFSKIN (“the Trade Mark”). The earliest trade mark registration submitted in evidence has a priority date of August 23, 1982.
The Respondent registered the Domain Name on September 11, 2016. The Domain Name was connected to a website which offers for sale clothing, footwear and headgear (“the Website”). The Website bears the Trade Mark and also the Complainant’s paw logo.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on December 7, 2016 that the language of the proceeding should be English. The Complainant contends that the Domain Name is in English as is the content of the Website. English is not the native language of the Complainant which has its headquarters in Germany. To ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, language requirements should not lead to an undue burden on the parties and undue delay to the proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds that the Website content is in the English language which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights to the Trade Mark which pre date the Domain Name.
The Domain Name integrates the Trade Mark with the descriptive term “outlet” and the descriptive generic Top-Level Domain (“gTLD”) suffix “.store”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffix. In any event, the addition of a descriptive term “outlet” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. V. Wu bingjie aka bingjie we/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to the Trade Mark and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not entitled to any trade mark, trade name or any other right in the name “Jack Wolfskin”. The Respondent has neither a commercial relationship nor any association with the Complainant, and has no permission from the Complainant to use the Trade Mark. The purpose of the registration of the Domain Name is to advertise clothing and other articles for the intention of leading consumers to the false impression that the Website is operated by the Complainant. The Complainant has not commented on whether the goods sold on the Website are genuine “Jack” Wolfskin” products.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
Even if the goods sold on the Website are genuine goods, the Respondent fails to fall within the Oki Data principles as it has not disclosed its relationship with the Complainant. It is clear to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “[…] that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark”.
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Trade Mark was registered and used by the Complainant long before the registration of the Domain Name. The Respondent’s awareness of the existence of the Trade Mark when it registered the Domain Name is proved by the “Jack Wolfskin” products offered on the Website and the Notices which indicate the Respondent’s connection with the Complainant.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. In the Panel’s view this is clear evidence that the registration of the Domain Names was in bad faith.
The Panel also finds that the actual use of the Domain Name was in bad faith. The Website was set up to deliberately mislead internet users that it is connected to, authorised by or affiliated to the Complainant. Further, the misspelling of the Trade Mark in the Domain Name is intended to attract searchers to the Respondent’s websites by creating a likelihood of confusion in order to make visitors think that they are on the Complainant’s legitimate website or that these websites are endorsed and sponsored by or affiliated to the Complainant. Such use amounts to use in bad faith.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under 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 Domain Name, <jackwolfskinoutlet.store>, be transferred to the Complainant.
Date: January 18, 2017