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 Role Manage Technical Administraion Local of Hong Kong, SAR of China, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 9, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 10, 2010, Moniker Online Services, LLC 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 Complainants on December 10, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 10, 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 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 20, 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.
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 contend that a line of footwear goods has been sold under the JUSTIN trademark since 1879 and that trade names including the JUSTIN trademark, such as Justin Industries Inc., Justin Boot Company and Justin Brands, Inc. have been used by the Complainants since the 1950’s.
The Complainants produce evidence of several trademark registrations in the United States of America, including inter alia registration No. 2,020,461 of December 3, 1996 issued by the United States Patent and Trademark Office to Boot Royalty Company L.P., of a JUSTIN trademark “for boots …in class 25”, and the Complainants also submit a list of registrations of JUSTIN trademarks (without however providing the dates or copies thereof) in over twelve countries outside the United States.
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 (including the domain name registered on or about October 23, 1996).
The disputed domain name was created on June 23, 2002. 5. Parties’ Contentions A. Complainants
(i) The Complainants contend that the disputed domain name is identical and confusingly similar to the trademarks at issue, because it incorporates in its entirety the name “Justin” 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 “Justin” 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 at the disputed domain name and cause them to believe is affiliated with or endorsed by the Complainants.
(iv) The Complainants request that the disputed domain name be transferred to the Complainant Justin Brands, Inc. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural aspects
6.1.1. 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, as was also determined in Boot Royalty Company, L.P., Justin Brands, Inc. v. Bin Jiang,WIPO Case No. D2010-1536.
6.1.2. 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
6.2.1. The first 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.
6.2.2. With respect to the requirements of paragraph 4(a) of the Policy: A. Identical or Confusingly Similar
In comparing the JUSTIN trademark to the disputed domain name, it is evident that the latter, , consists solely of the JUSTIN trademark, 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 JUSTIN trademark, 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 the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name is a search engine with click-through possible selections of goods, notably footwear, and is not providing any information on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainants have argued that the Respondent is not (i) making a bona fide use of the disputed domain name, (ii) making a fair or legitimate noncommercial use of the disputed domain name or (iii) commonly known by 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 Complainants have 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 Section 12(2) of the relevant registrar’s Registration Agreement; (ii) failing to obtain the Complainants’ authorization despite being aware of the Complainant’s exclusive rights to the JUSTIN trademarks; (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 these 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 the Complainant Justin Brands, Inc.
Louis-Bernard Buchman
Sole Panelist
Dated: February 3, 2011
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