The Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc. of Texas, United States of America, represented by Kelly Hart & Hallman LLP, United States of America (“the United States”).
The Respondent is Taejang Toonglo of Chiangrai, Thailand. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 4, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On November 4, 2011, GoD, Inc. 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 employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on December 21, 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 language of the proceeding is English, as well as the language of the Registration Agreement. 4. Factual Background (uncontested facts)
The Complainants are affiliated entities. Boot Royalty Company, L.P. owns numerous registered trademarks in many countries, which it licenses to Justin Brands, Inc. One of those marks is United States Federally registered trademark No. 2,160,449 JUSTIN, registered on May 26, 1998 for boots in Class 25, with a date of first use in 1879 and first use in commerce in 1906. Justin Brands, Inc. designs and manufactures apparel, accessories and footwear (especially boots, for which it is best known), which it distributes via approximately 3,700 retailers throughout the world and sells via the Internet. The Complainants also have common law rights in the JUSTIN mark dating from 1879 The JUSTIN mark is well-known.
The Domain Name was registered on March 10, 2010. It resolves to a website headed “Justin Boots”, depicting the Complainants’ copyrighted product images and containing “click through” advertising links to boots and other footwear of both the Complainants and their competitors. 5. Parties’ Contentions A. Complainants
The Complainants seek consolidation since they both have rights in the JUSTIN trademark. They say the Domain Name is confusingly similar to that mark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainants say the Respondent is not known by the Domain Name. An extensive search has failed to find any trademark belonging to the Respondent corresponding to the Domain Name. The Complainants have not authorized the Respondent to use the JUSTIN mark and the Respondent is not an authorized distributor or retailer of their products. The Respondent’s use of the Domain Name is neither bona fide nor noncommercial, since the Respondent is likely to derive click-through revenue from the website, which gives the misleading impression that it is operated or sponsored by the Complainants.
As to bad faith, the Complainants say the Respondent must have known of the Complainants’ famous JUSTIN mark when registering the Domain Name. The registration of the Domain Name violates section 4 of the Registration Agreement. Its use is intentionally to divert Internet users from the Complainants’ website to the Respondent’s website. The Respondent has engaged in such conduct before: see Lego Juris A/S v. Taejang Toonglo,WIPO Case No. D2010-0457. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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.”
Under paragraph 4(a) of the Policy, the complainant has the burden of proof in respect of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848.
Each of the Complainants has rights in the JUSTIN trademark, one as licensor and the other as licensee. Accordingly both are entitled to participate in these proceedings. A. Identical or Confusingly Similar
It is undisputed that the Complainants’ JUSTIN mark is famous in relation to boots.
“Essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113. The test of confusing similarity is confined to a comparison of the disputed domain name and the trademark alone: BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480. The specific top level of the Domain Name, in this case “.com”, may be disregarded for the purpose of determining whether the domain name is identical or confusingly similar to the trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The presence of the word “boots” and the numerals “123” does nothing to distinguish the Domain Name from the JUSTIN trademark. The Panel finds the Domain Name to be confusingly similar to the Complainants’ JUSTIN mark.
The Complainants have established this element of their case. B. Rights or Legitimate Interests
The Panel finds that the JUSTIN mark is distinctive. It is uncontested that the mark is famous. The Complainants’ assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in the Domain Name (See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the UDRP cases there cited). The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants have established this element of their case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
Given the fame of the Complainants’ JUSTIN mark in relation to boots, the Domain Name itself is evidence that the Respondent had the Complainants’ JUSTIN mark in mind when registering the Domain Name. The content of the Respondent’s website is likely to mislead Internet users into believing that the site is operated by or sponsored by the Complainants. The Panel finds that this is the Respondent’s intent and accordingly that paragraph 4(b)(iv) of the Policy applies. In the absence of any countervailing evidence pointing towards good faith registration or good faith use, the Panel finds that the Domain Name was registered and is being used in bad faith.
The Complainants have established this element of their case. 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 Domain Name be transferred to the Complainant Justin Brands, Inc.
Alan L. Limbury
Sole Panelist
Dated: January 4, 2012
Full & Egal Universal Law Academy