The Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc. of Fort Worth, Texas, United States of America represented by Kelly Hart & Hallman LLP, United States of America.
The Respondent is Dauben, Inc. d/b/a Texas International Property, Waxahachie and Dallas, Associates - NA NA, of Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Compana LLC. a request for registrar verification in connection with the disputed domain name. On July 2, 2010, Compana LLC. 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 July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2010.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on September 14, 2010. 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. On September 14, 2010, the Complainants filed a request that the Center provide the Complainants with a list of identifying materials transmitted to the Panel. On September 17, 2010, the Center provided a table identifying relevant materials contained in the case file that were transmitted to the Panel. 4. Factual Background
The disputed domain name was registered on March 19, 2005. The Complainants are comprised of two separate entities, Boot Royalty Company, L.P. (hereinafter: “Boot Royalty”), and Justin Brands, Inc. (hereinafter: “Justin Brands”), both located in Forth Worth, Texas United States. The Complaint states that Boot Royalty is the owner of the following United States trademark registrations:
JUSTIN (and design), registration no. 1101091, registered on September 5, 1978, in international classes 1,3,4, and 25.
JUSTIN (and design), registration no. 1856810, registered on October 4, 1994, in international class 25.
JUSTIN, registration no. 2020461, registered on December 3, 1996, in international classes 3, 4 and 25.
JUSTIN, registration no. 2160449, registered on March 5, 2002, in international class 25.
JUSTIN BRANDS, registration no. 2545249, registered on March 5, 2002, in international class 25.
JUSTIN. 03.1 (and design), registration no. 2689344, registered on February 18, 2003, in international class 25.
Copies of these registrations were attached as Exhibits D1-D6 of the Complaint.
These registrations hereinafter individually and collectively referred to as the “Mark”. 5. Parties’ Contentions A. Complainants
The Complainants are engaged in the design, manufacture and distribution of footwear, which are marketed under a number of labels, the best-known of which are footwear sold under the JUSTIN family of marks. Complainants have used the JUSTIN marks on an unregistered basis on footwear since 1879 (Declaration of Herbert Beckwith, Paragraph 3, hereinafter: “Beckwith Declaration”). The Complainants' products are sold in approximately 3700 retailers and distributors world-wide, as well through on-line storefronts (Beckwith Declaration, Paragraph 2). The Complainants have acquired substantial goodwill in its Mark, including the JUSTIN mark, with respect to footwear, throughout the world (Beckwith Declaration, Paragraph 2).
Since the1950’s, the Complainants, through Justin Brands, have operated under a variety of names, all of which contain the mark JUSTIN (Beckwith Declaration, Paragraph 6).
The Complainants are the registrant of numerous domain names, each of which incorporate the mark JUSTIN, under the “.com”, “.biz” and “.net” top level domain names. In particular, the Complainants have registered on or about October 23, 1996; on or about October 5, 1999; and on or about November 6, 2000 (Beckwith Declaration, Paragraph 5).
The Complainants describe the two entities as being “affiliated”, whereby Boot Royalty “owns the trade names and domain names associated with its business”, while Justin Brands “owns all the intellectual property, including the trademarks, pertaining to Justin Brands, Inc’s business.”
The Respondent’s website associated with the disputed domain name contains numerous sponsored links to websites of various footwear manufacturers and retailers. For example, in one example of a page taken from the Respondent’s website, at the top of the page there appears the caption—“Welcome to ”. Below this caption in smaller print is the caption—“For resources and information on Jordan Shoes and Boot Shoes.” On the left hand side of the page, there are 12 links, including a link to “Justin Shoes”. At the lower central portion of the page there appear an additional 12 links to footwear-related sites. Examples of additional pages taken from the Respondent’s website are similar (Exhibits E-1 to E-3 of the Complaint).
The Complainants alleges the following:
(1) The disputed domain name is confusingly similar to the Complainants’ Mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name.
(3) The disputed domain name was registered and has been used in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
In view of the Respondent's failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainants' undisputed and reasonable representations and it shall draw inferences that it deems appropriate. Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith. A. Consolidation of the Complainants
As a threshold question; are the Complainants permitted to consolidate multiple complainants in a single action? In National Dial A Word Registry Pty Ltd.and others v. 1300 Directory Pty Ltd.,WIPO Case No. DAU2008-0021 (adopted with approval by Fulham Football Club (1987) Limited and others v. Domains by Proxy, Inc. / Official Tickets Ltd.,WIPO Case No. D2009-0331) the panel, upon reviewing previous decisions given by other panels, articulated the following test to determine whether, having regard to all of the circumstances, it is permitted to consolidate multiple complainants:
“[C]onsolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, subject to the general condition that is equitable and procedurally efficient do so.”
In this connection, the panel in MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985, stated as follows:
“UDRP Panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based. Such situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc., supra; Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220; Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC,WIPO Case No. D2005-1052.” (Emphasis added by the Panel)
The question is whether the Complainants have satisfied this test. The Complainants describe the two entities as being “affiliated”, namely that Boot Royalty “owns the trade names and domain names associated with its business”, while Justin Brands “owns all the intellectual property, including the trademarks, pertaining to Justin Brands, Inc.’s business.” The Complaint does not provide any further information describing the “affiliate” relationship between the entities.
The Declarant, Herbert A. Beckwith, describes himself as “Senior Vice President and Chief Financial Officer of Justin Brands, Inc. and Boot Royalty Company, L.P.’s general partner, Footwear Investment Company” (Beckwith Declaration, Paragraph 1). Both the Complaint and the Beckwith Declaration go on to describe various activities of the Complainants with respect to the Mark and the products manufactured and sold thereunder, without however distinguishing or otherwise specifying the role played by Boot Royalty and Justin Brands, respectively.
The Panel would have liked to have been provided with further details about the nature of the “affiliate” relationship between the two entities. Nevertheless, based on the foregoing, the Panel is of the view that the Complainants have met the minimum threshold required for showing that the two entities have a common legal interest and grievance with respect to the subject matter of this action. The Mark forms the basis for both trade names and trademarks in which the two entities own certain rights. One of the Complainants, Boots Royalty, owns the registered United States trademarks, while the other Complainant, Justin Brands, is the registrant for domain names that include the name “Justin” as part of the top-level domain. This is sufficient to meet the "truly common grievance" test set out by the panel decision in National Dial a Word Registry, supra B. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainants as true and accurate.
With respect to the question whether the Complainants have met the substantive requirements under Paragraph 4(a)(i) of the Rules, the Panel rules that the Complainants have done so.
Boot Royalty is the owner of a number of United States trademark registrations that consist of, or include in material part, the mark JUSTIN. The registration date for each of these registrations of the Mark predates the registration date of the disputed domain name, being March 19, 2005.
The disputed domain name , while not identical to the Mark, differing by the addition of the formative “shoes” to the disputed domain name, is confusingly similar to the Mark within the meaning of paragraph 4(a)(i) of the Policy. In comparing a mark and a domain name, with respect to paragraph 4(a)(i) of the Policy, special attention should be paid to the dominant part of the domain name. Here, the first part of the disputed domain name is identical to the Mark. As stated by the panel in Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin,WIPO Case No. D2003-0888, “a domain name that wholly incorporates a Complainants' registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP”. That is the situation in our case.
Further, when a generic or highly descriptive term is added to a mark or name in which the complainant has rights, the addition of the generic or highly descriptive term does not serve to distinguish between the mark of the complainants and the domain name. As noted in the case of Dr. Ing. H.c.F. Porsche AG, supra, “[t]he fact that the word “auto parts” is added to the Complainants' trademark does not eliminate the identity, or at least the similarity, between Complainants' trademark and the disputed name, as “auto parts” is a descriptive component of the disputed domain name”. Here, as well, the formative “shoes” is highly descriptive, if not generic, in meaning and therefore does not serve to distinguish between the Mark and the domain name.
For all of the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to the Mark. C. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Having regard to the suggested grounds set out in paragraph 4(c) of the Policy, the Respondent has not submitted any response to support the claim that it has a right or legitimate interest in the disputed domain name.
There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof, or that it has any right in the Mark on an unregistered basis. There is no evidence that the Complainants have entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark. The name of the Respondent bears no resemblance to the disputed domain name nor is there any basis to conclude that the Respondent is known by it. The only “use” by the Respondent of the Mark is in connection with its registration of the disputed domain name.
As stated by the panel in Norm Reeves, Inc. v. Texas International Property Associates,WIPO Case No. D2009-1462: “[U]se of the Disputed Domain Name to direct Internet users to various third party commercial websites as here also does not constitute a legitimate, noncommercial use of the Disputed Domain Name under the Policy”. These words are equally appropriate in the instant case.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Here, as well, it is noted that the respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complaint as true and accurate.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a Respondent, as follows:
(i) The circumstances indicate that the respondent has registered the domain name primarily to sell or otherwise to transfer it to the respondent for valuable consideration to the complainant, who is the owner of the trademark, or to a competitor of the complainant.
(ii) The domain name has been registered to prevent the complainant from reflecting its mark in a corresponding domain name.
(iii) The domain name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the domain name indicates an intention to attract Internet users to the respondent’s website, for commercial gain, by creating a likelihood of confusion.
The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply and support the conclusion that the Respondent has acted in bad faith. The Complainants own United States registrations of JUSTIN-based trademarks for at least 27 years, and the date of first use of registration no. 1,101,091, inter alia for goods in international class 25, dates back to 1954. Without ruling on whether, and the extent to which, the Complainants enjoy United States common-law rights in the mark prior to 1954, the Panel is of the view that the it is reasonable to conclude that the Respondent had or should have had knowledge of the Complainants' prior rights in the Mark.
In its choice and use of the disputed domain name, the Respondent is attempting to intentionally mislead Internet users by deceptively attracting them to its site for the purpose of the Respondent’s commercial gain. The Internet user, when entering the Respondent’s website associated with the disputed domain name, encounters links to various third party sites, which are not related to the Complainants. In so doing, it is presumed that the Respondent reaps commercial benefit in an unauthorized manner.
In the Panel’s view, by registering a domain name that includes the Mark as the principle component and by using the disputed domain name to direct Internet users to a website containing sponsored links, the Respondent is taking advantage of the Complainant’s Mark and therefore, acting in bad faith. As stated by the panel in Norm Reeves, Inc. v. Texas International Property Associates,WIPO Case No. D2009-1462: “Respondent's registration of the Disputed Domain Name which directly reflects Complainant's NORM REEVES trademark, and then using this domain to attract Internet users to its website and to divert users to other websites for business services similar to those of Complainant while presumably deriving such commercial value from Complainant's mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy”. These words are equally appropriate in the instant case.
Based on the foregoing, the Panel is of the view that the Respondent has registered and used the disputed domain name in bad faith. 7. Decision
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 be transferred to the Complainant, Justin Brands, Inc.
Neil, J. Wilkof
Sole Panelist
Dated: September 28, 2010
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