The Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc. of Fort Worth, Texas, United States of America (collectively, the “Complainant”), represented by Kelly Hart & Hallman LLP, United States of America.
The Respondent is Noorinet of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2016, 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.
On September 20, 2016, the Center notified the parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On September 22, 2016, the Respondent requested for Korean to be the language of the proceeding. On the same day, the Complainant submitted its amended Complaint requesting for English to be the language of the proceeding.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Korean, and the proceedings commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on October 21, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 3, 2016. 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 Complainant, Justin Brands, Inc. and Boot Royalty Company, L.P., consolidate their grievances against the Respondent in this single Complaint. The Complainant has a trademark licensing relationship. Justin Brands, Inc. designs, manufactures, and distributes footwear, apparel, and accessories and also owns the trade names and domain names associated with its business operations. Boot Royalty Company, L.P. owns the trademarks at issue and licenses its marks to Justin Brands, Inc. for use in connection with Justin Brands, Inc.’s footwear, apparel, and accessories.
The Complainant, as a leading designer, manufacturer, and distributor of footwear, apparel, and accessories, is best known for its expansive collection of footwear products establishing itself as a premier provider of footwear, and its trademarks have acquired goodwill throughout the world. Its footwear is sold by approximately 3,700 retailers and distributors worldwide. The Complainant also makes extensive, worldwide use of its JUSTIN mark on the Internet and has sought to protect its JUSTIN mark which is registered worldwide, including in the Republic of Korea. The earliest of its registration dates back to 1997.
The Complainant also developed JUST JUSTIN mark as an extension of its JUSTIN family of trademarks in 1986 and claims it has used this mark for 30 years for its retail store services. The JUST JUSTIN mark has been used by the Complainant for retail stores that offer footwear manufactured for or by the Complainant. The Complainant has sold 161,776 pairs of JUSTIN branded footwear alone in its “Just Justin” stores. The Complainant’s trademark registration for JUST JUSTIN is currently pending.
The Respondent has not responded to the Complaint.
The disputed domain name was registered on January 6, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is confusingly similar to the Complainant’s JUSTIN and JUST JUSTIN trademarks and infringes upon the Complainant’s exclusive and undisputable rights in and to the marks. The disputed domain name includes the Complainant’s famous JUSTIN mark as a dominant portion and is also identical to the JUST JUSTIN trademark which the Complainant is using for its retail store services for 30 years.
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the mark JUSTIN. The Respondent shows no evidence that it has made use of or intends to make use of the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent’s website displays sponsored links that advertise the Complainant’s footwear products and also redirect Internet users to third-party websites where users may purchase the footwear products of the Complainant’s competitors.
3) the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name without the Complainant’s authorization despite being aware of the Complainant’s exclusive rights to the marks and is auctioning off the disputed domain name for an exorbitant price of USD 6,600. The Respondent is using the Complainant’s mark in the disputed domain name to redirect Internet traffic intended for the Complainant or its authorized retailers for the Respondent’s commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (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; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceeding
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English, and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean; and
2) The disputed domain name resolves to a website that includes links in English.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English. B. Consolidation of Complainants
A Complaint may be brought by multiple complainants if (i) the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
In the present case, the Panel finds that both Complainants have a common grievance against the Respondent as the disputed domain name comprises the trademarks/trade names of each of the Complainants. The Panel further finds that it would be equitable and procedurally efficient to proceed under the single Complaint as the Respondent’s registration of the disputed domain name affects the Complainants’ individual rights similarly.
Accordingly, the Panel accepts the consolidated Complaint. C. Identical or Confusingly Similar
This elements consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the marks JUSTIN.
The Complainant also claims unregistered rights to JUST JUSTIN mark. Based on the facts indicated above, the Panel finds that the Complainant also has established unregistered rights in JUST JUSTIN mark for the purposes of the Policy.
The disputed domain name is confusingly similar to the Complainant’s trademark JUSTIN and identical to JUST JUSTIN mark. The addition of a Top-Level Domain such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical of confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 2.0, paragraph 2.1.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainant has made out an unrebutted prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case provided that they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks, which is not descriptive or generic as it relates to clothing and footwear, in order to profit by hosting PPC links related to the Complainant’s area of business and offering to sell the disputed domain name for USD 6,600. The Panel finds that this conduct is evidence of cybersquatting and does not provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592).
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the name “justjustin”.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that the Complainant’s JUSTIN and JUST JUSTIN marks are widely known as they relate to clothing and footwear; that the disputed domain name is identical to the JUST JUSTIN mark; and that the disputed domain name contains advertisements with click-through links to not only the Complainant’s goods, but also to the competitors of the Complainant. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s trademarks.
Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto (particularly in view of the Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks in order to attract Internet users to its website for commercial gain.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 disputed domain name, , be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: November 19, 2016
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