Complainant is US Footwear Holdings LLC, United States of America (“United States”) (“Complainant”), represented by Porter Wright Morris & Arthur, LLP, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Bernard Sanderes, United States (“Respondent”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2021, 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 September 3, 2021, 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 September 3, 2021 (hereinafter, the “Complaint”).
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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 5, 2021. 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 BackgroundComplainant is the retailer of a wide range of boots and footwear for adults and children, including boots and shoes for work, farm, garden, sporting, equestrian and casual use. Since 1999. Complainant and its predecessor-in-interest have been involved in this business in the United States, using the MUCK BOOTS marks on its products. Complaint, Annex 4. The mark appears on the outer portion of Complainant’s footwear, Complainant’s website, and its social media pages, including Facebook, Twitter, Pinterest, and Instagram. Complaint, Annexes 4, 5, and 6.
Complainant is the owner of several United States Patent and Trademark Office (USPTO) registered trademarks concerning its water-proof footwear, the earliest of which were registered on October 5, 1999. Complaint, Annex 9. In addition, Complainant is the owner of registered trademarks in jurisdictions around the world for similar MUCK BOOTS marks.
The mark is also used on Complainant’s packaging and boxes, and on its website and social media accounts. Complaint, Annexes 4, 6, and 7. Complainant’s website was launched in 2001, and it serves as the main e-commerce platform for direct consumer purchases of Complainant’s MUCK BOOTS branded products.
Complainant’s sales of MUCK BOOTS branded footwear in the United States have generated revenues in excess of 100 million dollars. Complainant has spent several million dollars per year to advertise the MUCK BOOTS products in the United States alone. All of Complainant’s advertising features the MUCK BOOTS marks. Complainant’s MUCK BOOTS products have received media attention from Gear Junkie, Insider Outdoor Magazine, and New York Magazine, among other publications. Complaint, Annex 8.
Complainant has never authorized or otherwise permitted Respondent to use any of its registered marks.
The disputed domain name was registered on June 17, 2021. Complaint, Annex 1. The disputed domain name is currently being used to resolve to a website that mimics and practically copies the website maintained for years by Complainant, using Complainant’s trademarks, claiming Complainant’s copyrights, and offering for sale Complainant’s products, and a 90% discount from the prices Complainant asks on its website. Complaint, Annex 10. Complainant has received numerous complaints from consumers who have viewed Respondent’s website, ordered and paid for footwear they believed to me Complainant’s products and have never received the goods offered.
5. Parties’ Contentions A. ComplainantComplainant asserts that the disputed domain name is confusingly similar to Complainant’s registered trademarks. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) the domain name registered by the respondent 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. Identical or Confusingly SimilarThe disputed domain name consists of the MUCK BOOTS trademark with the insertion of the letter “z” in the space between the two words, followed by the generic Top-Level Domain “.com”. The “z” is often used in commercial naming to represent the sound that the plural “s” frequently gives to English language words. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithRespondent registered the confusingly similar disputed domain name and almost immediately began to use it to resolve to a website which is an exact copy of Complainant’s commercial website, but for the prices, which are 90% less than the prices Complainant offers on its website, which has otherwise been faithfully copied. Consumers have purchased the goods offered on Respondent’s website, believing they are being offered by Complainant, and, not having received the goods ordered, contacted Complainant and demanded the ordered goods. There can be no clearer case that the disputed domain name was registered and is being used in bad faith.
7. DecisionFor 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,
M. Scott Donahey
Sole Panelist
Date: October 6, 2021