The Complainant is Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA of Idstein/Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is ming li of Shanxi, China.
The disputed domain name <officialjackwolfskin.com> (the “Disputed Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 21, 2014, 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.
On July 22, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On the same day, the Complainant submitted its request that English be the language of the proceeding by email. The Respondent did not submit its comments within the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2014.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on August 27, 2014. 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.
The Complainant is a German corporation which sells outdoor and sporting apparel. The Complainant is the owner of the following registered trademarks:
1. JACK WOLFSKIN, International trademark, Registration No. 629193, registered on November 4, 1994.
2. JACK WOLFSKIN + PAW DEVICE, Community trademark, Registration No. 3034915, registered on February 7, 2005.
According to the WhoIs data and the Registrar’s verification response, the Respondent is ming li. The Disputed Domain Name was registered on December 2, 2013.
The Registrar confirmed, in its email of July 21, 2014, that the Registration Agreement for the Disputed Domain Name is in Chinese.
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name incorporates the Complainant’s JACK WOLFSKIN trademark in its entirety with an additional element “official”, which is a descriptive word and is not able to create a sufficient distinction between the Disputed Domain Name and the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent is not entitled to any trademark, trade name or any other right in the name “Jack Wolfskin”. The Respondent is not licensed or authorized by the Complainant to use the Complainant’s JACK WOLFSKIN trademark in any form. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent uses the Dispute Domain Name for the commercial purpose of selling goods labeled with the Complainant’s trademark.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant’s JACK WOLFSKIN trademark. The Respondent intentionally uses the Disputed Domain Name to mislead consumers for commercial gain. The Respondent also pretends a not existing commercial connection to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding”.
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requests the language of proceeding to be English. The Respondent did not reply to the request of the Complainant. The Registration Agreement for the Disputed Domain Name <officialjackwolfskin.com> is in Chinese. Given to the following factors, the Panel decides that the language of proceeding be English.
1. The Disputed Domain Name <officialjackwolfskin.com> comprises completely English elements and covers the English words “official”, “jack” and “wolfskin”;
2. Given that the content of the web site to which the Disputed Domain Name resolves contains extensive use of English, it appears that the Respondent understands and is able to communicate in English. The Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese;
3. The Center has notified the parties of the potential language issue in both Chinese and English on July 22, 2014. The Respondent did not make any comment on or object to the language requested by the Complainant before the specified deadline indicated in the Center’s July 22, 2014 notification.
Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the owner of the JACK WOLFSKIN trademark.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
The Disputed Domain Name incorporates the JACK WOLFSKIN trademark in its entirety. The other element incorporated to the Disputed Domain Name is only the descriptive word “official”. The JACK WOLFSKIN element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of a generic term “official” does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s JACK WOLFSKIN trademark. (J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui, WIPO Case No. D2010-0534).
As for the generic Top-Level Domain suffix “.com” in the Disputed Domain Name, it does not serve to distinguish the Disputed Domain Name from the Complainant’s JACK WOLFSKIN trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: “[n]ormally, 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. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the JACK WOLFSKIN trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the JACK WOLFSKIN trademark to register the Disputed Domain Name or any other variations.
According to the record in the WhoIs database, the name of the Respondent is ming li, which has no apparent connection to the JACK WOLFSKIN trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “Jack Wolfskin”. The Complainant also provides screenshots from the web site to which the Disputed Domain Name resolves, which show that the Respondent purportedly offers JACK WOLFSKIN branded outdoor and sporting apparel for sale. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any response to the Complaint. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.
Meanwhile, the web site to which the Disputed Domain Name resolves sells outdoor and sporting apparel with the JACK WOLFSKIN trademark, and does not accurately and prominently disclose the Respondent’s relationship with the Complainant. The Panel need not decide whether the goods sold on the web site are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Name when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.
The Complainant’s JACK WOLFSKIN trademark has been registered in many countries around the world prior to the registration of the Disputed Domain Name. The Respondent chose the JACK WOLFSKIN trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the web site to which the Disputed Domain Name resolves that were annexed to the Complaint, the Respondent uses the JACK WOLFSKIN trademark to sell outdoor and sporting apparel. It thus appears that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s JACK WOLFSKIN trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the JACK WOLFSKIN string with a generic term for any reason other than the reputation of the Complainant’s trademark. The Panel finds that the Disputed Domain Name has been registered in bad faith.
The Respondent uses the JACK WOLFSKIN trademark on the front page of the web site to which the Disputed Domain Name resolves. The web site sells outdoor and sporting apparel under the JACK WOLFSKIN trademark. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. On the top left-hand side of the front page of the disputed web site, the Respondent uses the identical JACK WOLFSKIN + PAW DEVICE trademark and an advertising banner “AT HOME OUTDOORS” as does the Complainant’s official web site: “www.jack-wolfskin.com”. At the very bottom of the disputed web site, the Respondent has posted a statement: “© 2013 www.officialjackwolfskin.com All right reserved.” On the bottom right-hand side of the disputed web site, the Respondent provides several icons that link to the Complainant’s promotion pages on social media, such as Facebook and Twitter. The Respondent has intentionally designed the web site under the Disputed Domain Name to create an impression with Internet users that it is an official web site of the Complainant, or is endorsed or sponsored by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion. This use of the Disputed Domain Name is clearly in bad faith.
The Panel also notes that the Respondent provided incorrect contact details to the Registrar when registering the Disputed Domain Name, as is shown by the fact that the delivery of the Written Notice of the Complaint to the Respondent by courier was not possible due to the incorrect Respondent’s address and phone number. The Panel finds that this constitutes further evidence of bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in 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 <officialjackwolfskin.com> be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: September 9, 2014