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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Sabrina Metzger and Tanja Freeh

Case No. D2021-1048

1. The Parties

Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Germany, represented by SILKA AB, Sweden.

Respondents are Sabrina Metzger, Germany (“Respondent No. 1”) and Tanja Freeh, Germany (“Respondent No. 2”) (together “Respondents”).

2. The Domain Names and Registrar

The disputed domain names <jackwolfskinca.com> and <jackwolfskindehu.org> are registered with NameSilo, LLC (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 names. On April 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 19, 2021, including comments on the consolidation

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 Respondents of the Complaint, and the proceedings commenced on April 23, 2021. The Center also notified to the Parties the prima facie consolidation of Respondents. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on May 14, 2021.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 8, 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

Complainant is a company organized under the laws of Germany that is active in the outdoor equipment industry.

Complainant has provided evidence that it is the owner of numerous trademark registrations relating to its company name and brand “Jack Wolfskin”, inter alia, the following with protection for Germany:

- Word mark JACK WOLFSKIN, German Trademark and Patent Office (DPMA), registration number: 1049490, registration date: June 8, 1983, status: active;
- Word mark JACK WOLFSKIN, European Union Intellectual Property Office (EUIPO), registration number: 006733208, registration date: May 20, 2009, status: active;
- Word/device mark JACK WOLFSKIN, EUIPO, registration number: 001161272, registration date: September 19, 2000, status: active.

Moreover, Complainant has demonstrated to own various domain names relating to its JACK WOLFSKIN trademark, inter alia, the domain name <jackwolfskin.com>, which redirects to Complainant’s official website at “www.jackwolfskin.com”, used to promote Complainant’s outdoor products and related services worldwide.

Respondents, according to the disclosed WhoIs information for the disputed domain names, are both residents of Germany who registered the disputed domain name <jackwolfskindehu.org> on December 13, 2020 (Respondent No. 1) and the disputed domain name <jackwolfskinca.com> on November 16, 2020 (Respondent No.2), accordingly. While the disputed domain name <jackwolfskindehu.org> apparently does not redirect to any valid content on the Internet, the disputed domain name <jackwolfskinca.com> is used to run a website at “www.jackwolfskinca.com” offering outdoor products bearing Complainant’s JACK WOLFSKIN trademark for online sale, thereby promoting Complainant’s official logo as well as official pictures of Complainant’s products.

Complainant requests that the disputed domain names be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant recites that it was founded back in 1981 in Germany and that it today has approximately 4000 retail outlets and 549 stores worldwide, the result being a widespread reputation of Complainant’s JACK WOLFSKIN trademark in the fashion industry. Complainant submits that the disputed domain names are confusingly similar to Complainant’s JACK WOLFSKIN trademark, as they incorporate the latter entirely, with the geographical terms “dehu” (for the Indian province Dehu) and “ca” for Canada not adding to the domain names’ distinctiveness. Moreover, Complainant asserts that Respondents have no rights or legitimate interests in respect of the disputed domain names since (1) they are no authorized dealers of Complainant’s products or services, (2) they registered the disputed domain names only in 2020, which is long after Complainant’s JACK WOLFSKIN trademark became internationally known, and (3) there is no apparent reason to justify the choice of the words “Jack Wolfskin” in the disputed domain names, which carry a high risk of implied affiliation with Complainant. Finally, Complainant argues that Respondents have registered and are using the disputed domain names in bad faith since (1) Complainant has a widespread reputation in its JACK WOLFSKIN trademark including in Canada and India, and it is inconceivable that Respondents would not have had actual knowledge of Complainant’s trademark rights at the time of the registration of the disputed domain names in 2020, (2) the disputed domain name <jackwolfskinca.com> is used to run a website displaying Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission to do so, and (3) the disputed domain name <jackwolfskindehu.com> is currently inactive, which still gives rise to a use of it in bad faith given that Complainant’s JACK WOLFSKIN trademark is widely known particularly in the fashion industry.

B. Respondent

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) That the disputed domain names have been registered and are being used in bad faith.

Respondents’ default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondents do not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondents’ failure to submit a Response as it considers appropriate.

A. Consolidation

Given that Respondents allegedly are both located in Germany (though the WhoIs information for the disputed domain names are most likely false as the listed telephone numbers are not relating to Germany and the email client apparently is Chinese) and given that Respondents have registered the disputed domain names, which both have been set up in a similar manner (combining Complainant’s trademark JACK WOLFSKIN with a geographical term) through the same registrar, in a close temporal link, it is reasonable to argue that the disputed domain names are subject to common control which is why it is also fair and equitable to all parties that this Complaint is consolidated against multiple respondents at the same time (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain names are confusingly similar to the JACK WOLFSKIN trademark in which Complainant has rights.

The disputed domain names both incorporate the JACK WOLFSKIN trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. geographic or descriptive) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition in the disputed domain names of geographic or descriptive terms such as “dehu” (perhaps relating to the Indian town Dehu) on the one hand, and “ca” (the two-letter-code for “Canada”) on the other hand, does not dispel the confusing similarity arising from the incorporation of Complainant’s JACK WOLFSKIN trademark in both disputed domain names.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondents have not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor have Respondents been commonly known by the disputed domain names, nor can it be found that Respondents have made a legitimate noncommercial or fair use thereof without intent for commercial gain.

None of the Respondents has been authorized to use Complainant’s JACK WOLFSKIN trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondents’ names somehow correspond with the disputed domain names and Respondents do not appear to have any trademark rights associated with the term “Jack Wolfskin” on their own. To the contrary, Respondent No. 2 obviously runs a website under the disputed domain name <jackwolfskinca.com> which purports to offer for sale Complainant’s “Jack Wolfskin” outdoor products, thereby displaying Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission to do so. The Panel recognizes that the case file leaves it open if the goods offered under the disputed domain name are original or fake “Jack Wolfskin” products. But even if those products were originals, apart from imitating Complainant’s official website, Respondent No. 2 obviously does not disclose, neither accurately nor prominently, the non-existing relationship with Complainant as the JACK WOLFSKIN trademark holder, and, therefore, may not claim any nominative fair use of the disputed domain name <jackwolfskinca.com>, neither as an authorized nor as an unauthorized reseller of Complainant’s JACK WOLFSKIN products (see the so-called “Oki Data test”, WIPO Overview 3.0, section 2.8.1). Moreover, as far as Respondent No. 1 and the disputed domain name <jackwolfskindehu.org> is concerned, it appears that by the time of the rendering of this decision, this disputed domain name does not resolve to any active content on the Internet – and that it never has done so in the past. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).

Accordingly, Complainant has established a prima facie case that Respondents have no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondents to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondents have defaulted, Respondents have not met that burden.

The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

D. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondents in bad faith.

As for Respondent No. 2 and the disputed domain name <jackwolfskinca.com>, the circumstances to this case leave no doubt that Respondent No. 2 was fully aware of Complainant’s rights in the JACK WOLFSKIN trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that the latter is clearly directed to this trademark. Moreover, using the disputed domain name <jackwolfskinca.com>, which is confusingly similar to Complainant’s JAQCK WOLFSKIN trademark, to run a website which purports to offer for sale Complainant’s “Jack Wolfskin” outdoor products, thereby displaying Complainant’s official trademark and logo as well as official pictures of products probably obtained from the Complainant’s website without its permission to do so, is a clear indication that Respondent No. 2 intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s JACK WOLFSKIN trademark as to the source, sponsorship, affiliation or endorsement of Respondent No. 2’s website. Such circumstances are evidence of registration and use of the disputed domain name <jackwolfskinca.com> in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

As for Respondent No. 1 and the disputed domain name <jackwolfskindehu.org>, following a general rule, UDRP panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain names may be put. Complainant contends, and Respondents have not challenged this contention, that its JACK WOLFSKIN trademark enjoys a widespread reputation in the fashion industry. Besides, this Panel has no reasonable doubts that Respondent No. 1 was well aware of Complainant and its JACK WOLFSKIN trademark when registering the disputed domain name <jackwolfskindehu.org>, and that the latter is directly pointing thereto. By the same time, the circumstances to the case at hand leave no room for any plausible use of this disputed domain name, which would not take unfair advantage by profiting from the undisputed reputation, which Complainant’s JACK WOLFSKIN trademark enjoys. Against this background, the passive holding of the disputed domain name <jackwolfskindehu.org> by Respondent No. 1 is not in contrast to hold that Respondent No. 1 registered and is using the disputed domain name <jackwolfskindehu.org> in bad faith within the larger meaning of paragraph 4(b) of the Policy.

Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

7. Decision

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 names <jackwolfskinca.com> and <jackwolfskindehu.org> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: June 16, 2021

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