Complainant is TBL Licensing LLC, United States of America (“United States”), represented by SILKA Law AB, Sweden.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Ward Christopher Joseph, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, the Registrar 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 Complainant on December 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 30, 2019. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on February 14, 2020. 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 Complainant is a 40 year old brand making rugged outdoor gear. Complainant is the owner of the following trademark registrations relevant to this matter: TIMBERLAND – Malaysia Reg. No. 00009016 (registered on June 11, 2003); (Collectively, the “TIMBERLAND Mark”). On November 1, 2019, Respondent registered the Domain Name with the Registrar. The Domain Name resolves to a website selling allegedly counterfeit goods. 5. Parties’ Contentions A. Complainant Complainant alleges that the TIMBERLAND brand has a 40 year history of craftsmanship and authentic style clothing and outdoor products. Complainant asserts that it sells its products through approximately 230 company-owned stores and through department and athletic shops in Asia, Canada, Europe, Latin America, the Middle East, and the United States. Complainant claims to have a significant presence on various social media platforms with 8 million followers on Facebook, 23,000 subscribers on YouTube, 245,000 followers on Instagram and 17,000 followers on Twitter. With respect to the first element of the Policy, Complainant alleges that the Domain Name incorporates Complainant’s TIMBERLAND Mark merely adding the letter “x” and the generic or descriptive term “outlet”. Thus, Complainant contends that the Domain Name is confusingly similar to the TIMBERLAND Mark. Moving on to the second element of the Policy, Complainant asserts that Respondent is not commonly known by the name “timberland”. Moreover, Complainant alleges that Respondent cannot be making a bona fide offering of goods or services because Respondent is offering counterfeit products for sale and is using Complainant’s trademarks and copyright protected images without authorization, to create the impression that the website displayed at the Domain Name is authorized by or related to Complainant. In addition, Complainant points out that potential customers can also create an account on the website where sensitive information is obtained such as user name and password. Lastly, concerning the third element of the Policy, Complainant alleges that the TIMBERLAND Mark was well-known prior to the registration of the Domain Name and that Respondent’s actions of developing an infringing website and selling counterfeit products establishes that the Domain Name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.2. Complainant has provided evidence that it is the owner of registrations for the TIMBERLAND Mark. Accordingly, the Panel finds that Complainant has sufficiently established it has rights in the TIMBERLAND Mark. Furthermore, the Panel finds that Complainant’s rights in the TIMBERLAND Mark predate the registration date of the Domain Name. It is well established that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int'l Inc. v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans,WIPO Case No. D2010-0097. In this case, the addition of “xoutlet” does nothing to distinguish the Domain Name from Complainant’s TIMBERLAND Mark. See Golden Goose S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Wei Zhang, WIPO Case No. D2018-0287; Statoil ASA (Statoil) v. Liheng, Just Traffic Supervision Consulting,WIPO Case No. D2016-2115; Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany,WIPO Case No. D2015-0999. Accordingly, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the TIMBERLAND Mark in which Complainant has valid subsisting trademark rights. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. In this matter, Complainant contends Respondent developed a website at the Domain Name using Complainant’s trademarks, graphics and images to sell counterfeit products. Respondent has been properly notified of the Complaint by the Center; however, Respondent failed to submit any response concerning these serious accusations. Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions. As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name, as the WhoIs information lists Respondent as Ward Christopher Joseph. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy. Also, the Panel finds that Respondent’s use is not legitimate use of the Domain Name. Respondent is using the Domain Name to resolve to a website engaged in unlawfully selling counterfeit goods. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) In addition, the use of the Domain Name to divert Internet traffic to an infringing webpage is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options). Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is selling counterfeit or competing product from an online retail website. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. Accordingly, for the reasons detailed above, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent had the opportunity to put forth evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent "knew or should have known" of a complainant's trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to Complainant’s TIMBERLAND Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed, and in fact, the addition of the descriptive term “xoutlet” increases the likelihood of confusion because it merely describes a manner in which Complainant’s TIMBERLAND branded products could be sold to consumers, i.e. via an outlet. As discussed herein, Respondent registered the Domain Name and linked it to a website that Complainant alleges is selling counterfeit products. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs.,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd,WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name); Virgin Enterprises Limited v. Balticsea LLC / Contact Privacy Inc. Customer 0134432592,WIPO Case No. D2016-2148 (finding that a general offering to sell the domain name is evidence of registration of the domain name in bad faith). For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 John C McElwaine
TIMBERLAND – European Union Reg. No. EU000164525 (registered on June 22, 1998);
TIMBERLAND – United States Reg. No. 1300704 (registered on October 16, 1984);
TIMBERLAND – United States Reg. No. 1588288 (registered on March 20, 1990).
Sole Panelist
Date: February 28, 2020
Full & Egal Universal Law Academy