WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Hermansson Yusuf
Case No. D2021-1047
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Germany, represented by Silka AB, Sweden.
The Respondent is Hermansson Yusuf, Germany.
2. The Domain Name and Registrar
The disputed domain name <jackwolfskinaustria.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 12, 2021.
The Center verified that the Complaint together with the amendment to 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 April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on May 9, 2021. 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 Germany based company, which was founded in 1981 and provides outdoor and sports equipment worldwide. It currently operates 549 stores worldwide (Annex 5 to the Complaint).
The Complainant is the owner of the trademark JACK WOLFSKIN, which has been launched in 1983 and is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the German Trademark Registration No. DE1049490, registered on June 8, 1983, and the European Union Trade Mark Registration No. 001161272, registered on September 19, 2000. These registered trademarks cover protection for various goods and services, in particular for textiles and clothing (Annex 6 to the Complaint).
The Complainant also owns and operates various domain names, which incorporate the JACK WOLFSKIN trademark, such as <jack-wolfskin.com> and <jackwolfskin.com>.
The Respondent is an individual from Germany.
The disputed domain name was registered on November 23, 2020.
Apparently, the disputed domain name has not been actively used since its registration. It particularly does not resolve to an active website (Annex 8 to the Complaint).
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusing similar to its JACK WOLFSKIN trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark JACK WOLFSKIN by virtue of various trademark registrations, including trademark registrations covering protection in Germany, where the Respondent appears to be located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered JACK WOLFSKIN trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The mere addition of the country name “Austria” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s JACK WOLFSKIN trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement. In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark JACK WOLFSKIN in a confusingly similar way within disputed domain name.
In return, the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). There is particularly no indication in the current record that the Respondent is commonly known by the disputed domain name, not least because the disputed domain name has yet not been actively used. In the absence of a Response, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name in 2020. At the date of registration of the disputed domain name, the Complainant’s JACK WOLFSKIN trademark was already registered and widely used for many years.
With respect to the use of the disputed domain name in bad faith, as already indicated before, the disputed domain name has apparently yet not been linked to an active website. Nonetheless, and in line with the previous UDRP decisions (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use.
Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s trademark JACK WOLFSKIN as sufficiently distinctive, so that any descriptive use of the Complainant’s trademark by the Respondent seems unlikely. Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use. Finally, the Panel notes that it cannot conceive of any plausible and legitimate use of the disputed domain name that would be in good faith, except with an authorization of the Complainant. Particularly, as the nature of disputed domain name carries a risk of implied affiliation or association, the Panel is of the opinion that any active website linked to the dispute domain name would likely cause the false impression that it is operated or at least endorsed or authorized by the Complainant.
Taking all circumstances of this case into consideration, the Panel concludes that in the present case the passive holding of the disputed domain name sufficiently indicates bad faith use by the Respondent.
Consequently, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 <jackwolfskinaustria.com> be transferred to the Complainant.
Date: May 23, 2021