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Arbitration and Mediation Center
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Get Register
Case No. D2003-0976
1. The Parties
The Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Idstein/Taunus, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Get Register, C/O Adil Shakour, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <jackwolfskin.com> (hereafter "the disputed domain name"), registered with eNom (hereafter "the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on December 10, 2003. On December 12, 2003, the Center transmitted
by email to eNom a request for registrar verification in connection with the
domain name at issue. The Registrar failed to respond to the Center's request.
The present Panel wishes to add its voice to the concerns expressed by a number
of panels confronted to the same situation (Miroglio S.p.A. v. Mr. Alexander
Albert W. Gore, WIPO Case No. D2003-0557;
Regals Removals v. Gary Bradshaw, WIPO Case
No. D2003-0832; Six Continents Hotels, Inc. v. Amjud Kansar WIPO
Case No. D2003-0663; Microsoft Corporation v. Modern Limited WIPO
Case No. D2003-0919). It is essential that Registrars answer the Center's
requests for registrar verification in order to ascertain the contact information
of the Respondent and secure the Respondent's rights of defense.
The Center and the Panel separately verified the Whois database of the Registrar and found confirmation of the information contained in the Complaint, that is the name and all contact details of the Respondent as well as the confirmation that the dispute is subject to the present proceedings.
The Center also verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 December 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2004.
The Center appointed Pierre Olivier Kobel as the sole Panelist in this matter on February 5, 2004. 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 manufacturer of outdoor garments traded under the name "Jack Wolfskin". The Complainant owns numerous trademarks corresponding to its trade name "Jack Wolfskin", including:
- a "JACK WOLFSKIN" trademark registered on January 17, 1989, in the United States under No 1520768, for goods falling in classes 18, 20, 22 and 25;
- a "JACK WOLFSKIN" trademark registered on June 8, 1983, in Germany under No 1049490 for goods falling in classes 20, 22 and 25;
- a "JACK WOLFSKIN" trademark registered on May 9, 1995, in Germany under No 39403832 for goods falling in classes 18, 22, 25 and 28;
- a "JACK WOLFSKIN" trademark registered on July 4, 1997, in Germany under No 39609588 for goods falling in classes 9, 25 and 28;
- a "JACK WOLFSKIN" trademark registered on September 12, 2001, in Germany under No 30130555 for services falling in classes 39, 41 and 42;
- an International "JACK WOLFSKIN" trademark No 657670 with priority starting on November 29, 1995, registered in Austria, Benelux, Switzerland, France, Italy and Great Britain, for goods falling in classes 10, 20 and 37;
- an International "JACK WOLFSKIN" trademark No 673642 with priority starting on December 24, 1996, registered in Austria, Benelux, Switzerland, Spain, France, Italy, Poland and Great Britain, for goods falling in classes 9, 25 and 28;
- an International "JACK WOLFSKIN" trademark No 629193 registered in Canada, for goods falling in classes 18, 20, 22 and 25;
- an International "JACK WOLFSKIN" trademark No 643936 for goods falling in classes 18, 22, 25 and 28.
The disputed domain name was registered on March 24, 2003.
5. Parties’ Contentions
The Complainant explains that a company called Johnson Outdoors Inc., the former holding company of the Complainant, owned the disputed domain name. As part of a restructuring, that company apparently released the disputed domain name, to allow the Complainant to register this domain name in its own right. However, before the Complainant could register the domain name for itself, the Respondent registered the disputed domain name.
On April 7, 2003, the Complainant sent a cease and desist notice by e-mail to the Respondent, explaining that the release was intended for the company's reorganization. The Complainant submits that the Respondent replied with an offer to sell the disputed domain name and confessed that the single reason for the registration of the domain name after its expiry was to sell it because his company works on expiring domains.
The Complainant contends that the disputed domain name was registered exclusively for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or to a competitor of the Complainant. The Complainant alleges that the Respondent was willing to sell the disputed domain name to the Complainant who accepted to pay a reimbursement for the transfer of the domain of USD 100. However, the Respondent failed to perform the steps necessary to transfer the disputed domain name.
Complainant is seeking the transfer of the disputed domain name in the meaning of paragraph 4(i) of the Policy.
The Respondent failed to respond within the time limit set forth by paragraph 5 of the Policy and is therefore in default.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith. When the Respondent fails to respond, the Panel shall draw such inferences therefrom as it considers appropriate (paragraph 14 (b) of the Policy).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant's trademark "JACK WOLFSKIN" in the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to the evidence provided by the Complainant, it appears that in answer to the Complainant's cease and desist notice, the Respondent did not contest the fact that it had registered the disputed domain name as soon as the Complainant had released it. It did not contest the Complainant's trademark and mainly claimed that if it had not taken the disputed domain name someone else would have. According to the Respondent, that is how domain registration industry worked. It first explained that it "was just in the process of setting a shopping center to sell Jack Wolfskin brand equipment" but was "more than happy to offer you the domain for a price". Thereafter, the Respondent explained that his "company worked on expiring domains" and confirmed again his willingness to sell the disputed domain. The Respondent finally offered the disputed domain for USD 100. - expressing his desire to avoid "this to go to a UDRP". Although the Complainant accepted the Respondent's offer, the transaction was never completed.
The Panel does not exclude that the business of registering domain names with a view to offer them for consideration may perhaps, under certain conditions, be considered as a legitimate interest in the meaning of Paragraph 4(c)(i) of the Policy. However, registering domain names in which third parties have rights with a view to trade them one way or another, cannot constitute a bona fide offering of services in the meaning of paragraph 4(c)(i) of the Policy, unless the registrant has another legitimate interest in the domain name at dispute.
The Panel therefore finds that the Complainant has proven the Respondent's absence of legitimate interest in the disputed domain name in the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Although the Respondent claimed to be in the business of "expiring domains" and was "more than happy to offer (you) the domain for a price", it did not effect the transfer of the disputed domain name to the Complainant, for the price offered by the Respondent itself. Instead, it appears that the Respondent is now using the disputed domain name to direct Internet users to an e-commerce website "www.sandhdesings.com/devcart.asp" which proposes for sale bags and other apparels of famous trademarks such as Fendi and Prada, however not any "Jack Wolfskin" outdoor equipment. In plain terms, the Respondent is trading on the Complainant's trademark and reputation.
The Respondent did not only register the disputed domain name without any bona fide purpose, but actually used it to attract, for commercial gain, Internet users to an e-commerce website selling other or competing goods, by creating a likelihood of confusion with the Complainant's trademark. This is a clear evidence of registration and use of the disputed domain name in bad faith in the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith in the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <jackwolfskin.com> be transferred to the Complainant.
Pierre Olivier Kobel
Dated: February 19, 2004