Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Andy Lau
Case No. D2015-1536
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, of Idstein/Taunus, Germany, represented by Harmsen, Utescher, Germany.
The Respondent is Andy Lau, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2015, 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 September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 15, 2015. 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 company based in Germany that sells outerwear and sporting apparel and equipment throughout the world and has done so for 25 years. All goods of the Complainant are labelled with “Jack Wolfskin”.
The Complainant is the owner of a number of trade mark registrations consisting of the word “Jack Wolfskin” (the “JACK WOLFSKIN Mark”), which it first registered in Germany in 1992 and in the European Union in 2008. The JACK WOLFSKIN Mark is registered for goods including clothing, footwear and headgear in class 25.
The Domain Name was registered on November 23, 2014. It currently resolves to an Internet site (“Respondent’s Website”) which features the Complainant’s name and Bear Paw device and appears to offer for sale clothing and other outerwear accessories that are either the Complainant’s products or products that are identical or similar to those offered by the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s JACK WOLFSKIN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the JACK WOLFSKIN Mark having registered the JACK WOLFSKIN Mark in Germany, the European Union and internationally.
The Domain Name consists of the JACK WOLFSKIN Mark in its entirety with the addition of the element “outlet”. The Domain Name is confusingly similar to the Complainant’s JACK WOLFSKIN Mark as the additional element is purely descriptive/generic and creates the impression that the website is likely to lead to an outlet store offering the Complainant’s products.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to divert Internet traffic to the Respondent’s Website that is for commercial purposes, intentionally leading consumers to the false impression that the website is owned by the Complainant. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that advertises the Complainant’s products for the purpose of advertising its products and creating a likelihood of confusion with the Complainant. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is the Complainant’s website and to profit from this confusion. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the JACK WOLFSKIN Mark, having registrations for the JACK WOLFSKIN Mark as a trade mark in Germany and the European Union.
The Domain Name consists of the JACK WOLFSKIN Mark, with the addition of the word “-outlet”. The addition of the word “-outlet” does not prevent a finding of confusing similarity. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to an outlet store run by the Complainant or otherwise associated with the Complainant. The Panel finds that the Domain Name is confusingly similar to the Complainant’s JACK WOLFSKIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the JACK WOLFSKIN Mark or a mark similar to the JACK WOLFSKIN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell outerwear and apparel, some of which are stated to be the Complainant’s products, however it is unclear whether they are legitimate Jack Wolfskin products or competitor/counterfeit products.
If the outerwear and apparel sold on the Respondent’s Website are not genuine Jack Wolfskin products, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s JACK WOLFSKIN Mark for a site selling other products. The same applies if the Respondent is using the Domain Name to commit a fraud on potential clients of the Complainant.
If the Respondent is offering genuine Jack Wolfskin products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“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 sites 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.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the JACK WOLFSKIN Mark gives the impression that the Respondent’s Website is an official website of the Complainant. Members of the public who are interested in Jack Wolfskin products may visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself or an authorized dealer or reseller of Jack Wolfskin products. This is not the case. In the event that the Respondent is reselling genuine Jack Wolfskin products, its use in its present form does not grant it rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the JACK WOLFSKIN Mark at the time the Domain Name was registered. The Domain Name resolves to a website that displays the JACK WOLFSKIN Mark, reproduces the Complainant’s Bear Paw device and sells products that the site asserts are the Complainant’s products.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either resold Jack Wolfskin products or products that compete with Jack Wolfskin products. The Respondent is using the Domain Name that is confusingly similar to the JACK WOLFSKIN Mark to sell products, be they legitimate or otherwise in competition with the Complainant and without the Complainant’s approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s JACK WOLFSKIN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name be transferred to the Complainant.
Date: October 20, 2015