The Complainants are Boot Royalty Company, L.P., and Justin Brands, Inc., both of Fort Worth, Texas, United States of America, represented by Kelly Hart & Hallman LLP, United States of America.
The Respondent is Purple Bucquet of Panama City, Republic of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On November 26, 2010, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 6, 2010.
The Center verified that the Complaint together with the amended 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 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2010.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 13, 2011. 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 Complainants have requested a consolidation of their grievances in a single case as they are common and a single decision would be procedurally efficient. The Panel determines that joinder of the Complainants is proper in this case.
Regarding the language of the proceeding, the Complainants assert that to the best of their knowledge, the language of the Registration Agreement is English. In the absence of any Response by the Respondent, this assertion remains undisputed and in the light of the copy of the Registration Agreement provided as an annex to the Amended Complaint, which is in English, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English. 4. Factual Background
The evidence submitted by the Complainants, which remains undisputed, indicates that Boot Royalty Company, L.P. owns and manages the trademarks which form the basis of the Amended Complaint, and that Boot Royalty Company, L.P. has licensed the trademarks at issue to Justin Brands, Inc. for use by the latter in connection with the footwear, apparel, and accessories it designs, manufactures and distributes. Such footwear is sold by approximately 3,700 retailers and distributors worldwide, according to the Complainants.
The Complainants assert that the common law use by their predecessors of the name “Tony Lama” as a trademark dates back to 1911, although they produce evidence of United States trademark Registration No. 525,522 of May 23, 1950 in which Tony Lama, a resident of El Paso, Texas, USA, states that the [TONY LAMA] trademark “was first used on December 2, 1923” and in interstate commerce on the same date. Be it as it may, the Complainants further submit evidence of four U.S. trademarks registered with the USPTO by Boot Royalty Company, L.P. on December 4, 2007 (Registration No. 3,346,736), on March 18, 2008 (Registration No. 3,398,852) and on April 27, 2010 (Registrations No. 3,782,213 and No. 3,782,214), respectively, “for footwear, namely boots”, which all contain the name “Tony Lama” or “Lama”, and the Complainants also submit a list of registrations of TONY LAMA trademarks (without however providing the dates or copies thereof) in over twenty countries outside the United States of America.
The Complainants assert that Justin Brands, Inc., which is under common control with Boot Royalty Company, L.P., owns the domain names associated with its business.
The disputed domain name was created on December 9, 2002. 5. Parties’ Contentions A. Complainants
(i) The Complainants contend that the disputed domain name is identical to and confusingly similar to the trademarks at issue, because it incorporates in its entirety the name “Tony Lama” with the mere addition of the expression “boots” which is not the distinctive element of the disputed domain name.
(ii) The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, since the Complainants never authorized the Respondent to use the distinctive signs constituted by or including the TONY LAMA name.
(iii) The Complainants contend that the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the latter is used for a commercial aim to grab the consumers’ attention, lure them to the Respondent’s website and cause them to believe is affiliated with or endorsed by the Complainants when in fact it contains sponsored links advertising the footwear of the Complainants’ competitors.
(iv) The Complainants request that the disputed domain name be transferred to Justin Brands, Inc. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural aspects
Under paragraph 4(a) of the Policy, a complainant has the burden of establishing that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainants.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent has acted in bad faith. 6.2. Substantive issues
The first issue for the Panel, since the registration date of the disputed domain name seems to predate the first registration of the name “Tony Lama” as a trademark by at least one of the Complainants, is to determine whether Tony Lama Company, Inc., a Texas corporation, owner of the Tony Lama U.S. trademark No. 525,522 as shown on its renewal on May 15, 1990, is a predecessor in interest of either one of the Complainants. The affidavit submitted by the Complainants and containing references to TONY LAMA U.S. trademarks for, inter alia, boots, with registration dates earlier than 2002, is accepted by the Panel as sufficient to determine that Boot Royalty Company, L.P. is the successor in interest of the trademark rights in the TONY LAMA family of common law and registered trademarks.
The second issue to be determined is whether it is at all necessary for the Panel to decide that the Complainants have successfully asserted common-law trademark rights. The Panel finds that given the long history of registered trademark rights that it has accepted as traced to the Complainants, it does not have to reach this issue.
However, it is worth noting that to succeed on this claim, the Complainants should have shown that the “Tony Lama” name has become a distinctive identifier associated with the Complainants or their goods. Relevant evidence of the acquisition of such “secondary meaning” should have included the length and amount of sales of TONY LAMA-marked boots, the nature and extent of advertising, consumer surveys and media recognition. See Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575;
Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; and Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322.
The third issue to be determined is whether the Complainants may in principle be granted the remedy sought, i.e. the transfer of a disputed domain name, to a party (Justin Brands, Inc.) which is presented as a mere licensee of trademark rights owned by another party. The Panel finds that in most circumstances, it has been decided that a licensee of a trademark or a company related to the registered holder of a mark is considered to have rights in a trademark under the UDRP. See Telcel, C.A. v. jerm and Jhonattan Ramírez,WIPO Case No. D2002-0309; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796; and Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc.,WIPO Case No. D2003-1027. Accordingly, the Panel holds that the remedy sought in this case could, in principle, be obtained by the Complainants, provided all other requirements are met.
With respect to the requirements of paragraph 4(a) of the Policy: A. Identical or Confusingly Similar
In comparing the TONY LAMA family of marks to the disputed domain name, it is evident that the latter, , consists solely of the trademark TONY LAMA, followed by the non-distinctive expression “boots” and the generic term “com”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name is confusingly similar to the Tony Lama mark, which it incorporates in its entirety.
Thus, the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name is apparently sponsoring links to boots and other goods competing with the Complainants’ goods, which is inherently in contradiction with any right or legitimate interest of the Respondent in the disputed domain name.
Since the Respondent has not submitted a Response or provided any evidence or arguments in this proceeding, the Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ four arguments that the Respondent acted in bad faith by (i) violating Sections 3(3)(1) and 3(5) of the concerned registrar’s Registration Agreement; (ii) failing to obtain the Complainants’ authorization despite being aware of the Complainant’s exclusive rights to the TONY LAMA marks; (iii) redirecting Internet traffic, intended for the Complainants or their authorized retailers, for the Respondent’s commercial gain; and (iv) disrupting the business operations of the Complainants and of their authorized retailers.
The Panel concludes in the present circumstances that the Respondent registered and is using the disputed domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 disputed domain name be transferred to Justin Brands, Inc.
Louis-Bernard Buchman
Sole Panelist
Dated: January 27, 2011
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