WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wolford Aktiengesellschaft v. Carl Papa
Case No. D2017-1412
1. The Parties
The Complainant is Wolford Aktiengesellschaft of Bregenz, Austria, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Carl Papa of Paoli, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wolfordkobenhavn.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 5, 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 a top end textile manufacturer based in Bregenz, Austria. According to a Wikipedia entry annexed to the Complaint, it was founded in 1950 and is the manufacturer of a range of women's clothing and accessories. The name Wolford was coined from a combination of the name of the founder, Wolff and the city of Oxford. It markets through 270 retail stores world-wide and has revenues of EUR 157.35 million. The Complainant is the owner of several trade mark registrations consisting of or including the word "Wolford" including the following:
- European Union trade mark 008890221 (WOLFORD) registered on August 2, 2010;
- European Union trade mark 00482494 (WOLFORD logo) registered on March 5, 2007.
The Complainant is also the owner of a number of domain names including the word "Wolford" mainly <wolford.com>, <wolfordshop.com>, <wolfordshop.dk> and <wolford.dk>.
The disputed domain name was registered on May 20, 2017. The disputed domain name resolves to a website copying the contents of the Complainant's website where the Respondent purports to sell WOLFORD trademarked garments. The Complainant alledges that these are counterfeit goods.
5. Parties' Contentions
The Complainant's contentions may be summarised as follows:
(i) The disputed domain name is confusingly similar to the Complainant's trade mark because it combines the trade mark WOLFORD with the geographic term "Kobenhavn". The addition of the geographic term is insufficient to avoid confusing similarity between the trade mark and the disputed domain name and further, the public might get the impression that the disputed domain name is intended to identify the Complainant's business in Copenhagen, Denmark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. It has no registered trade marks or personal names corresponding to the designation "Wolford". The Complainant has not licensed or authorised the Respondent to use the trade mark WOLFORD and the Respondent is unknown to the Complainant and is not authorised to act as its retailer in Copenhagen.
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a site prominently featuring the Complainant's trade mark and offering for sale garments purporting to be WOLFORD trademarked garments at substantially discounted prices. The Complainant states that it is unable to determine whether the Respondent is actually selling or delivering any products or whether the products are original or counterfeit; nevertheless the Complainant believes that the goods are counterfeit. The Complainant submits as evidence that the Respondent is offering counterfeit goods, the fact that the disputed domain name does not display contact information and that the Respondent has reproduced the Complainant's copyrighted photographs; the resolution of these photographs taken from the Complainant's website are of poor quality and the Privacy Notice at the Respondent's website contains many typographical and other errors and inaccuracies. The Complainant refers to WIPO Overview of WIPO Panel Views on elected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.1.4.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of trade mark registrations for the word WOLFORD alone and WOLFORD within a distinctive border. The disputed domain name comprises the WOLFORD trade mark with the addition of the geographic term "kobenhavn" and the generic Top-Level Domain ("gTLD") ".com". Neither of these additions serve to distinguish the disputed domain from the Complainant's WOLFORD trade mark. Accordingly the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark in which the Complainant has clearly established its rights.
B. Rights or Legitimate Interests
The Complainant asserts that it has not licensed or authorised the Respondent to use its trade mark in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights relating to the word "Wolford". For the reasons discussed in section 6.C. below, the Respondent's use of the disputed domain name is a commercial use and, on the balance of probabilities, is not use in the offering of bona fide goods or services.
The Complainant has produced a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has failed to rebut that showing. The Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's name and trade mark WOLFORD is well known in the field of clothing and accessories as evidenced by the Wikipedia entry annexed to the Complaint. It is not unreasonable therefore to expect that that Respondent would be aware of the Complainant and its trade mark. Further, and importantly, the disputed domain name comprises the Complainant's name coupled with the Danish spelling of Denmark's capital, Kobenhavn. To that extent, the disputed domain name speaks for itself. The word "Wolford" is a coined word and, as the Complainant submits, the combination of that word with the geographic term "Kobenhavn", is likely to be understood by Internet users to indicate that the Complainant has an outlet in Copenhagen or in some way or another has a presence in that city. The Panel accepts that submission and is of the opinion that Internet users would be likely to believe that the website to which the disputed domain name resolves is owned by or associated with the Complainant. The Panel therefore accepts that the Respondent registered the disputed domain name in the knowledge of the Complainant's trade mark and reputation and with intent to misleadingly attract Internet users to its website on the basis of the reputation of the Complainant's trade mark.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainant asserts, and the Respondent has not denied, that the photographs appearing on the Respondent's website are photographs in which the Complainant holds copyright and which the Complainant has not authorised the Respondent to reproduce. Further, the reproduction of the Complainant's logo gives the impression that the website is owned by or connected with the Complainant. Whilst the Complainant states that it does not know whether or not the goods offered at the Respondent's website are genuine goods or indeed, whether there are any goods offered for sale at the website, the evidence which it points to is an indication, taken with the other facts cited above, enough to satisfy the Panel that the Respondent's use of the disputed domain name is in bad faith. In this regard, the Panel notes, in particular, that under the "Contact Us" tab at the Respondent's website, no contact information is given for the Respondent but name and contact details are sought from the internet user.
The Panel therefore finds that the disputed domain name has been 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 disputed domain name <wolfordkobenhavn.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: September 20, 2017