WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomas Wuttke v. Sharing, Jason Lau

Case No. D2012-2471

1. The Parties

The Complainant is Thomas Wuttke of Quickborn, Germany, represented by Harmsen Utescher, Germany.

The Respondent is Sharing, Jason Lau of Fuzhou, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <wellensteynjacken.org> 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 December 17, 2012. On December 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2013.

The Center appointed Joan Clark as the sole panelist in this matter on January 21, 2013. 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 the owner of numerous registrations in Germany for the trademark WELLENSTEYN, sometimes alone and sometimes in combination with a device. The earliest of these registrations has a priority date of June 8, 2000. The Complainant is also the owner of a European Community trademark registration for the mark WELLENSTEYN with a priority date of October 31, 2003, an International registration for the same mark with a priority date of November 17, 2003 and a United States of America (“US”) registration for the mark WELLENSTEYN and device registered with a priority date of March 11, 2008.

The Respondent is the registrant of the disputed domain name <wellensteynjacken.org> which was created on October 11, 2011 and is scheduled to expire on October 11, 2013.

5. Parties’ Contentions

A. Complainant

The Complaint states that the Complainant Thomas Wuttke is the founder and at present limited partner of the well-known textile manufacturing company “Wellensteyn International GmbH & Co. KG”. The Complaint further states that the Complainant is the owner of numerous word and device marks containing the word Wellensteyn, with the earliest registration being for a German trademark with a priority date of June 8, 2000 as well as other German trademarks for the same word, some with a device, all with a priority date subsequent to June 8, 2000, and, in addition a Community trademark registration with a priority date of October 31, 2003 for WELLENSTEYN, and International registration for the mark WELLENSTEYN with a priority date of November 17, 2003, as well as US registrations for the mark WELLENSTEYN and device with a priority date of March 11, 2008.

The Complaint declares that the Complainant granted the company Wellensteyn International GmbH & Co. KG exclusive rights to use the designation “wellensteyn” as trademarks and also as part of its trade name, and that the said company Wellensteyn International GmbH & Co. KG uses the trademarks widely with the consent of the Complainant. The Complaint maintains that Wellensteyn International GmbH & Co. KG is famous for its jackets which are distributed by most known retailers in Germany. The Complaint refers to these as “Wellensteyn-jackets” and declares that there are over thirty “Wellensteyn Collection Stores” in Germany, and that the company Wellensteyn International GmbH & Co. KG offers its products on its website under several domains including <wellensteyn.de> and <wellensteyn.com>.

The Complaint asserts that the disputed domain name <wellensteynjacken.org> is nearly identical to the above-mentioned trademarks registered in the name of the Complainant. The Complaint further maintains that the disputed domain name is dominated by the element “wellensteyn”, since the remainder of the disputed domain name “jacken” is the German word for jackets and thus, merely descriptive.

The Complaint asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that there is no relationship between the Respondent and the Complainant or the aforesaid company licensed by the Complainant, Wellensteyn International GmbH & Co. KG. The Complaint continues that the Respondent is not a licensee of the Complainant or of the aforementioned company and has not otherwise obtained any authorization to use the trademark WELLENSTEYN.

The Complaint states that the Respondent is using the disputed domain name for commercial purposes, that it operates a web-shop under the disputed domain name and offers Wellensteyn jackets although neither the Complainant nor the aforementioned company has anything to do with the Respondent, and in particular, the Respondent is not an authorized dealer. The Complaint assumes that the products labeled with the designation “wellensteyn” and offered on the Respondent’s website are counterfeits.

The Complaint observes that if Internet users search for the Complainant with the designation “ wellensteyn”, they reach the Respondent’s website, and due to the identical products and identical designation “wellensteyn”, the Respondent creates the impression that the disputed domain name is operated by the Complainant or an authorized retailer. The Complaint adds that the Respondent’s website would lead Internet users to the conclusion that the Complainant is the operator of the online shop and the seller of the products offered on the Respondent’s website, or, at least, that the Respondent is affiliated with the Complainant.

The Complaint refers to the decisions of WIPO administrative panels in which the panels have stated that the Complainant has absolute rights to the marks WELLENSTEYN and also that the domain names <wellensteynjacken.com> and <wellensteynjacken.info> are confusingly similar to the Complainant’s WELLENSTEYN marks.

The Complaint asserts that the disputed domain name was registered exclusively for the purpose of exploiting the good reputation of the Complainant and his trademarks and Wellensteyn products, and that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s web-shop, by creating a likelihood of confusion with the Complainant’s marks.

The Complaint maintains that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The first, significant and prominent part of the disputed domain name <wellensteynjacken.org> is composed of the Complainant’s registered trademark WELLENSTEYN, followed by a descriptive term referring to the products to which the mark has been applied. As set forth in Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, “the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity”.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, in which he has rights.

The first element required for the Complaint to succeed has been established.

B. Rights or Legitimate Interests

The assertions in the Complaint that the Respondent has no rights or legitimate interests in the disputed domain name have cast the burden of establishing otherwise on the Respondent. In the absence of a Response, the Panel must consider whether the evidence provided by the Complaint justifies the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name in the terms of paragraph 4(c) of the Policy.

According to the Complaint, there is no indication that the Respondent owns any trademark, trade name or other rights in the designation “wellensteyn.” There is no relationship between the Respondent and the Complainant or his exclusive licensee, nor has the Respondent otherwise obtained any authorization to use the Complainant’s trademark WELLENSTEYN. The Complaint affirms that the Respondent is not an authorized dealer of the products labeled with the designation “wellensteyn” on the Respondent’s website.

There is no firm evidence as to whether the goods offered on the Respondent’s website are counterfeit goods or are “genuine” goods that previously originated with the Complainant or his exclusive licensee. The pages from the Respondent’s website produced with the Complaint show pictures of jackets for sale, each marked “Wellensteyn” with a description. The Complaint suggests that the goods offered on the Respondent’s website are counterfeit. If that is the case, the offering of such goods marked “Wellensteyn” on the Respondent’s website under a domain name confusingly similar to the Complainant’s trademark is not bona fide for the purposes of paragraph 4(c)(i) of the Policy.

On the other hand, if the goods offered on the Respondent’s website are “genuine” goods originally emanating from the Complainant or his licensee, certain conditions must be met for the offering for sale by the Respondent of such “genuine goods” to be bonafide for the purposes of paragraph 4(c)(i) of the Policy. Under the well-known decision in Oki Data Americas, Inc.v. ASD, Inc., WIPO Case No. D2001-0903, four requirements are laid down that must be met before an authorized dealer of goods can be said to be making a bona fide offering of trademarked goods under a website with a confusingly similar domain name. These requirements were confirmed to apply in the case of an unauthorized reseller in the decision in ITTManufacturing Enterprises, Inc.,ITT Corporation v. Douglas Nicoll,Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936 wherein they were enumerated as follows:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

(See also Daimler AG v. William Wood, WIPO Case No. D2008-1712.)

Continuing with the hypothesis that the goods offered on the Respondent’s website are “genuine” goods, the Respondent as an unauthorized reseller appears to meet the first and second conditions set forth above, but fails to meet the third, which is accurately to disclose the reseller’s relationship with the trademark owner. The pages produced from the Respondent’s website under the disputed domain name include the statement “Copyright © 2012 Wellensteyn Jacken. Powered by Wellensteyn Jacken”, thus excluding any indication of a relationship with the Complainant as a source of the products and implying instead that the products originate with the Respondent and not the Complainant. Consequently the offering for sale on the Respondent’s website of the trademarked goods even if “genuine” is not bona fide.

In summary, if the goods offered by the Respondent on his website under the disputed domain name are counterfeit goods, as suggested by the Complaint, that is, goods not emanating from the Complainant or his licensee, their offering under the disputed domain name is not bona fide. On the other hand, even if the goods offered by the Respondent are “genuine” goods having originated from the Complainant or its exclusive licensee, since a relationship between the Respondent and the Complainant or his exclusive licensee is not disclosed and by inference is negated, the offering of such goods is not bona fide.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element required for the Complaint to succeed has been established.

C. Registered and Used in Bad Faith

The Respondent has not replied to the Complaint, and so has not given any explanation for choosing a domain name clearly confusingly similar to the Complainant’s trademarks. The addition of the descriptive term “jacken” to “wellensteyn” in the disputed domain name is strong indication that the Respondent was well aware of the Complainant’s trademarks and their use in association with jackets and other outer clothing. The Panel finds that the Respondent registered and has used the disputed domain name in bad faith, with full knowledge of the Complainant’s WELLENSTEYN trademarks and in an effort to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s marks as to the source of the products offered on the Respondent’s website.

While each UDRP administrative proceeding must be decided on its own merits, the Panel could not fail to take note of three recently decided cases involving the Respondent identified under slightly different names: “Jason Lau, Sharing”, “Sharing”, and “Sharing/WHOIS Private Protective Services Inc.”:

- Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809 (<wellensteynjacken.com>)

- Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783 (<belstaffjackenoutlet.info>)

- Jack Wolfskin Ausrüstung von Draussen GmbH & Co. KGaA v. Sharing / Whois Privacy Protection Service Inc. and Jason Lau, WIPO Case No. D2012-1188 (<jack.wolfskinjacken.com>)

In each of these cases the Respondent had registered a domain name which consisted of a known trademark followed by a term descriptive of the goods associated with the mark, and which the Respondent was found to have registered and used in bad faith. The Panel finds this conduct to be consistent with the Respondent’s conduct in the present case and the finding that the disputed domain name was registered and used in bad faith.

The third element required for the Complaint to succeed has been established.

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 name <wellensteynjacken.org> be transferred to the Complainant.

Joan Clark
Sole Panelist
Date: February 4, 2013