Jack Wolfskin Ausrüstung für Draussen GmbH & Co., KGaA v. Luigii Cardinaee
Claim Number: FA1412001595635
Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co., KGaA (“Complainant”), represented by Todd Martin of Fross Zelnick Lehrman & Zissu, P.C., United States of America. Respondent is Luigii Cardinaee (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jackwolfskin.us>, registered with GODADDY.COM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2014; the National Arbitration Forum received payment on December 16, 2014.
On December 17, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <jackwolfskin.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jackwolfskin.us. Also on December 18, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the JACK WOLFSKIN brand to identify its outdoor clothing, footwear, and equipment. Complainant has registered JACK WOLFSKIN with trademark authorities worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,968,989, registered May 31, 2011).
2. The disputed domain name is identical to the JACK WOLFSKIN mark as the added “.us” country-code top-level domain (“ccTLD”) is irrelevant to the confusing similarity consideration.
3. Respondent has no rights or a legitimate interest in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name. Instead, the WHOIS record lists the registrant as “Luigii Cardinaee.”
4. Respondent is using the disputed domain name in connection with an unauthorized marketplace for counterfeit goods that is inaccurately presented as a Complainant’s “Official” outlet in the United States. This use of the disputed domain name in connection with the sale of counterfeit goods cannot constitute a bona fide use of the domain name, and is clearly commercial in nature.
5. Respondent’s use of the disputed domain name to sell counterfeit goods is evidence of bad faith. Specifically, Respondent attempts to pass itself off as Complainant by purporting to host Complainant’s “Official” outlet in the United States, and even includes images from Complainant’s own website. This amounts to unfair capitalization at the expense of Complainant. Further, Respondent registered the disputed domain name with clear knowledge of Complainant and its famous JACK WOLFSKIN mark.
6. The disputed domain name was registered December 11, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JACK WOLFSKIN mark. Respondent’s domain name is confusingly similar to Complainant’s JACK WOLFSKIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <jackwolfskin.us> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the JACK WOLFSKIN brand to identify its outdoor clothing, footwear, and equipment. Complainant has registered JACK WOLFSKIN with trademark authorities worldwide, including the USPTO (e.g., Reg. No. 3,968,989, registered May 31, 2011), and claims Policy ¶ 4(a)(i) rights in the mark in light of such registrations. The Complainant’s trademark registrations with USPTO sufficiently demonstrate Complainant’s rights in the JACK WOLFSKIN mark for the purposes of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under [USPTO] ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant claims the <jackwolfskin.us> domain name is identical to the JACK WOLFSKIN mark as the added “.us” ccTLD is irrelevant to the confusing similarity analysis. The disputed domain name also differs from the mark by the omission of the space between the two-word mark. The inclusion of a ccTLD and omission of spacing are irrelevant to the confusing similarity analysis of Policy ¶ 4(a)(i) as some TLD is required of all domain names and spacing is not replicable in domain names. For example, in Chan Luu, Inc. v. Danielle Dyke, FA 1441467 (Nat. Arb. Forum June 6, 2012), the panel found the <chanluu.us> domain name identical to the CHAN LUU mark as the domain name incorporated the mark in full less the space between the words and merely added the ccTLD “.us.” Accordingly, the Panel finds, for the purposes of Policy ¶ 4(a)(i), the <jackwolfskin.us> domain name is identical to the JACK WOLFSKIN mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant states there is no evidence that Respondent is commonly known by the disputed domain name. Instead, Complainant points out that the WHOIS record lists the registrant as “Luigii Cardinaee.” As Respondent has failed to rebut these allegations, the Panel agrees there is no basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the disputed domain name in connection with an unauthorized marketplace for counterfeit goods that is inaccurately presented as a Complainant’s “Official” outlet in the United States. Complainant claims this use of the disputed domain name in connection with the sale of counterfeit goods does not constitute a bona fide use of the domain name, and is clearly commercial in nature. Complainant further states that the resolving website makes use of images from Complainant’s own website. Complainant has included screen grabs of the disputed landing page, as well as Complainant’s own website. The Panel agrees that such attempts by Respondent to pass itself off as Complainant to sell counterfeit goods amounts to neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name to sell counterfeit goods is evidence of bad faith. Respondent’s misuse of the domain name is described above and will not be repeated here. There is evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent is using a confusingly similar domain name to pass itself off as a complainant and sell counterfeit goods bearing the complainant’s brand. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). Accordingly, the Panel agrees that Respondent’s attempt to sell counterfeit JACK WOLFSKIN goods and to commercially gain from Internet user confusion generated by the <jackwolfskin.us> domain name amounts to Policy ¶ 4(b)(iv) bad faith.
Further, Complainant argues that Respondent registered the disputed domain name with knowledge of Complainant and its famous JACK WOLFSKIN mark. The use of a domain name to sell counterfeit goods bearing an infringed mark provides sufficient basis to establish a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Accordingly, the Panel finds Respondent registered the disputed domain name with knowledge of the subject mark and Complainant’s rights therein, and therefore registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jackwolfskin.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 28, 2015
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