The Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc. of Fort Worth, Texas, United States of America (“U.S.”) represented by Kelly Hart & Hallman LLP, U.S.
The Respondent is Well Ballack, of Taiwan, Province of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 22, 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 October 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2012.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 21, 2012. 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 Complainants own, inter alia, registrations for the word mark TONY LAMA for footwear in the U.S. Common law use of the TONY LAMA word mark in commerce goes back to 1911. For many years the Complainants or their predecessors have used a logo with “Tony Lama Boots” wording on a red rectangle with a star. They also have trade mark registrations for the TONY LAMA name with the star in the U.S. and going back to 1982 in Taiwan where the Respondent is based.
The Respondent registered the Domain Name in 2012 and has used it for a site which prominently uses the “TONY LAMA” word mark and the Complainants' logo, has links to third party products and promotes footwear products competing with those of the Complainants. The Respondent has given false contact details such as “My Street” as registrant address. The copyright notice on the site suggests that the site is the official site of the Complainants. There is no explanation that the Respondent's site is not connected with the Complainants on the web site connected with the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainants' submissions can be summarised as follows:
The Complainants have a common grievance against the Respondent based on their common legal interest in the trade mark rights that form the basis of the Complaint. They are affiliated entities with the same principal place of business and both are wholly owned subsidiaries of J.S. Justin Inc. Justin Brands, Inc. owns the trade names and domain names associated with their business, but Boot Royalty Company, L.P. owns and manages the trade marks, copyrights and patents used by Justin Brands, Inc. in its business operations and licenses them to the latter. The Complainants share responsibility for the monitoring and enforcement of such trade mark rights. It is proper and procedurally efficient to consolidate the Complainants' grievances, because the Complainants have the same substantive arguments under the Policy, are represented by the same legal counsel, the Complaint involves only one domain name and the filings including annexes are not unreasonably voluminous.
The Complainants design, manufacture and distribute footwear, apparel and accessories, but are best known for boots. The Complainants' footwear is sold by 3,700 retailers and distributors worldwide in 40 countries including Taiwan where the Respondent is based. The Complainants are the sole and exclusive owners of the TONY LAMA mark for footwear. Common law use of this name dates back to 1911. The Complainants own, inter alia, a U.S. registration for the TONY LAMA word mark for footwear. For many years the Complainants or their predecessors have used a logo with “Tony Lama Boots” wording on a red rectangle with a star and they have registrations for the TONY LAMA name and the star, inter alia, in the U.S. and going back to 1982 in Taiwan where the Respondent is based.
The Complainants own and . The TONY LAMA mark has achieved fame as a result of long term continuous use of the mark by the Complainants internationally. The Complainants or their predecessors were using the TONY LAMA mark approximately 100 years before the Respondent registered the Domain Name.
For many years the Complainants or their predecessors have used a logo with “Tony Lama Boots” wording on a red rectangle with a star and they have registrations in the U.S. and Taiwan for the TONY LAMA name and the star.
The Domain Name incorporates the Complainants' TONY LAMA trade mark in its entirety and is confusingly similar to it. TONY LAMA is the dominant element of the Domain Name. Consumers will mistakenly draw a connection between the Complainants and their boots and the Domain Name and the Respondent's web site especially as the Domain Name is so similar to the Complainants' own domain names. The use of the generic top level domain name “.org” and the descriptive term “boots” does not diminish the confusing similarity between the Domain Name and the Complainants' mark. Use of “boots” in the Domain Name, in fact, increases the likelihood of confusion, as it has an obvious relationship to the Complainants' footwear business.
The Respondent prominently displays the TONY LAMA mark and the TONY LAMA logo with the star on the web site attached to Domain Name and this use of the Complainants' mark in this way creates the impression that the Respondent's web site is sponsored or approved by the Complainants when it is not and magnifies the confusing similarities between the Domain Name and the Complainants' mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not using or intending to use it in relation to a bona fide offering of goods and services. The Domain Name is being used to misleadingly divert customers from the Complainants to the Respondent's web site for commercial gain. The Respondent is not commonly known by the Domain Name or making legitimate, fair or non commercial use of it. The Complainants have not authorized the Respondent to use their mark.
The Respondent's addition of the word “boots” to the Domain Name demonstrates its knowledge of the Complainants as does its use of the Complainants' logo and discussion of the Complainants' business in the first few articles on the web site. Such blatant infringement cannot be bona fide. The use is to attract customers and is not fair discussion of the Complainants' mark. The Respondent could have used a non-infringing domain name for a blog, but did not and a lot of the blog entries are unconnected to the Complainants. The latest relevant one was posted months ago.
The Respondent's web site does not make it clear that there is no connection with the Complainants and does not disclose the Respondent's identity to the public. The Respondent masquerades as the Complainants in its copyright notice that appears on the web site attached to the Domain Name. This actively encourages the impression that the web site is owned or operated by the Complainants.
The Respondent has incorporated text ads into his blog, leading to third party web sites offering goods not connected with the Complainants, presumably for click though revenue. By using the Complainants' trade mark, the Respondent has sought to intentionally attempt to attract consumers to his web site by creating a likelihood of confusion and deriving commercial benefit by means of click through revenue from unfair use of the Complainants' mark. The web site promotes the footwear products of the Complainants' competitors with favourable reviews.
The Domain Name has been registered and used in bad faith as the Respondent registered it in the knowledge of the Complainants' rights.
The Respondent has provided false contacts details “My Street” as an address as registrant of the Domain Name.
The Registrant violates its Registration Agreement by using the name in a manner infringing third party intellectual property rights. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
As a preliminary issue the Panel finds that the Complainants have a common grievance against the Respondent based on their common legal interest in the trade mark rights that form the basis of the Complaint. They are affiliated entities with the same principal place of business and both are wholly owned subsidiaries of J.S. Justin Inc. Justin Brands, Inc. owns the trade names and domain names associated with their business, but Boot Royalty Company, L.P. owns and manages the trade marks, copyrights and patents used by Justin Brands, Inc. in its business operations and licenses them to the latter. The Complainants share responsibility for the monitoring and enforcement of such trade mark rights. The Panel agrees that it is proper and procedurally efficient to consolidate the Complainants' grievances, because the Complainants have the same substantive arguments under the Policy, are represented by the same legal counsel, the Complaint involves only one domain name and the filings including annexes are not unreasonably voluminous.
According to paragraph 4(a) of the Policy, the Complainants must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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. Identical or confusing similarity
The Complainants or their predecessors have had trade mark registrations consisting of or containing the TONY LAMA word mark and/or TONY LAMA Logo for many years around the world. The Domain Name is confusingly similar to the Complainants' trade mark consisting of the Complainants' TONY LAMA registered trade mark and the generic text “boots”, boots being the product for which the Complainants are best known. The distinctive part of the Domain Name is the TONY LAMA name. The addition of the non distinctive text “boots” does nothing to prevent the confusing similarity of the Domain Name with the Complainants' TONY LAMA trade mark, but, in fact, is likely to increase confusion given the fame of the Complainants' brand for footwear, especially boots. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainants have rights for the purpose of the Policy. B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainants, has not used the Domain Name for a bona fide offering of goods and services given its confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is it making non commercial fair use of the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainants' trade mark with only generic terms added which reflect the business in which the Complainants operate. Further, in the opinion of the Panel the use made of the Domain Name is deceptive. The content of the web site, using the brand name and official logo at the top, and reference to “Tony Lama Boots” in the copyright notice of the site without further explanation is confusing as to origin. It is not at all clear whether the site is or is not connected with the Complainants. As such the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainants.
The use of the trade marks on the site shows that the Respondent is well aware of the Complainants, their trade marks and goods. The site has been used for advertisement links to third party products and to promote products directly competing with those of the Complainants. In the absence of a Response from the Respondent, considering the fame of the Complainants and the material attached to the Domain Name the Panel is satisfied that the Complainants have shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its web site is connected to the Complainants. The Panel also notes the false address details given as “My Street” in the Who-Is records also suggestive of cybersquatting activity. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of the Policy. 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. as requested by the Complainants.
Dawn Osborne
Sole Panelist
Date: December 5, 2012
Full & Egal Universal Law Academy