The Complainant is Thursday Boot Company, United States of America (“United States” or “U.S.”), represented by Beard & Barks PLLC, United States.
The Respondents are Domain Admin, WHOISprotection.cc, Malaysia, Web Commerce Communications Limited, Malaysia, Cynthia Wagner, United States, Michelle Gordon, United States, Rita Gilbert, United States, Rudy Fry, United States, Rose Turner, United States, Alice Murray, United States, Gary Dillon, United States, Lisbeth Rose, United States, Gilbert Frasier, United States, Gladys Sipes, United States, Chauncey Thomas, United States, Mark Copeland, United States, Karen Clark, United States, Enid Walsh, United States, Embla Gottfrid, Germany, Benjamin Bachmeier, Germany, Marina Klein, Germany, Birgit Hartmann, Germany, Silke Austerlitz, Germany, Matthias Schwarz, Germany, and Jan Meyer, Germany.
2. The Domain Names and RegistrarsThe disputed domain names
The disputed domain names
The disputed domain names
The disputed domain names
The disputed domain names are referred to collectively in this decision as the “Disputed Domain Names” and individually each as a “Disputed Domain Name”.
3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names.
On December 20, 2021, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. On December 21, 2021, the Third Registrar and Fourth Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. On December 22, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on December 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 2, 2022.
The Center verified that the Complaint together with the 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, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2022.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 14, 2022. 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 BackgroundThe Complainant is a U.S. company. It was founded in 2014. It is an apparel company that designs and manufactures, among other goods, footwear products. It was founded based on the idea of making quality boots at affordable prices. In addition to producing and selling its successful footwear product line throughout the world, the Complainant also sells bags, briefcases, belts, laces, socks, wallets, boot brushes, hats, t-shirts, jackets, and other leather goods. The Complainant sells its footwear exclusively through its website linked to the
The Complainant has a range of registered trademarks which include trademarks for THURSDAY BOOT CO. – for example European Union Trade Mark no. 18255636 registered on December 1, 2020. These trademarks are referred to in this decision as the “THURSDAY BOOT” trademark.
The Disputed Domain Names were registered in September or October 2021 (see further below). Forty six of the Disputed Domain Names are linked to websites which purport to offer for sale products made by the Complainant. Of these thirty websites are in English and the remainder are in other languages. The Disputed Domain Names which do not resolve to a website purporting to offer for sale products made by the Complainant instead resolve to parking pages containing pay-per-click (“PPC”) links. The websites to which the Disputed Domain Names resolve are collectively referred to as the “Websites”.
The Complainant has provided extensive evidence (including a technical expert report examining possible connections between each of the Disputed Domain Names – the “Expert Report”). In the absence of any Response from any of the Respondents the Panel will accept the following facts derived from all of this evidence as being factually accurate.
The names and addresses of all individual Respondents (i.e. all Respondents other than Domain Admin, WHOISprotection.cc, and Web Commerce Communications Limited) are false.
The Domain Names can be broken down into three groups based on date of registration;
- Group I – fourteen of the Disputed Domain Names are within Group I and were registered on September 3, 2021, within a twenty-three-minute timespan. Each Disputed Domain Name, except one, follows an identical pattern, beginning with “thursdayboots” and ending with the name of a country. The one exception is
- Group II – fifteen of the Disputed Domain Names are within Group II and were registered on October 3, 2021, within a twenty-one-minute timespan. Each Disputed Domain Name follows an identical pattern, beginning with “thursdayboots” and ending with the name of a country.
- Group III – thirty-two Disputed Domain Names are within Group III and were registered on October 11, 2021, within a 240-minute timespan, or one Disputed Domain Name every 7.5 minutes. Further, each Disputed Domain Name follows a nearly identical pattern, beginning with “thursdayboots” and ending with the name of a country. The only variations to this pattern are (1) the addition of a hyphen between “thursdayboots” and the name of the country, and (2) the inclusion of
“Captain” is the name of a particular style of boot that the Complainant sells.
Further information derived from the Expert Report is set out in the Panel’s discussion below.
5. Parties’ Contentions A. ComplainantThe Complainant’s case is set out in some detail but it can be summarized as follows.
a) Each of the Disputed Domain Names is identical or confusingly similar to the THURSDAY BOOT trademark.
b) The Respondents do not have any rights or legitimate interests in any of the Disputed Domain Names.
c) The Respondents have registered and used each of the Disputed Domain Name in bad faith. It says the products offered for sale on the Respondents’ Websites, of those offering goods, are counterfeits of its goods. The Respondents’ Websites contain images, which are the Complainant’s copyright works. The Complainant says the Respondents have intentionally attempted to attract, for commercial gain, Internet users to its Websites by use of domain names confusingly similar to the Complainant’s THURSDAY BOOT trademark. The Complainant produces evidence from customers who have made enquiry of the Complainant as to the authenticity of some of the Respondents’ Websites. It says the Respondents have unfairly tried to take advantage of the THURSDAY BOOT trademark. It says those of the Respondents’ Websites which contain PPC links are likely ones which have not yet been used as part of the Respondents’ overall fraudulent scheme but in any event such websites are themselves indicative of bad faith use when used with a domain name which is confusingly similar to the Complainant’s trademark. The Complainant also says that the provision of false contact details indicates bad faith. Finally, the Complainant says there is evidence that the Respondents may in at least some cases not supply any goods that are ordered through the Respondents’ Websites but simply fraudulently keep payments made.
B. RespondentNone of the Respondents replied to the Complainant’s contentions.
6. Discussion and FindingsPreliminary Matters - Respondent Identity
The Panel notes this is a case where one of the named Respondents (“Domain Admin, WHOISprotection.cc”) appears to be a privacy service. Another of the named Respondents (“Web Commerce Communications Limited”) may on the evidence be acting on behalf of one or more undisclosed underlying clients.
The Panel in this case in relation to these two Respondents proceeds on the basis that the principles applicable to privacy and proxy services are applicable and adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case given the large number of Respondents and the large number of Disputed Domain Names and the Panel’s findings as to the nature of the Respondents’ activities (see below), the Panel considers it appropriate to proceed against all named Respondents including Domain Admin, WHOISprotection.cc and Web Commerce Communications Limited. References to the Respondents should be understood accordingly.
Preliminary Matters - No Response
The Panel notes that no communication has been received from any of the Respondents. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrars, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondents’ failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents’ default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Procedural Matters - Consolidation
A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview 3.0 at section 4.11.2, where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Panel thinks it convenient to set out verbatim the conclusions from the Expert Report, as follows:
“Conclusion. In my opinion:
1. The analysis above shows that a first group of fourteen disputed domain names was registered within a twenty-three-minute time span (Group I), a second group of fifteen domain names was registered within a twenty-one-minute time span (Group II), and a third group of thirty-two domain names was registered within a two-hour, thirty-six- minute time span (Group III). The analysis further shows that all sixty domain names, across all three groups, were registered within five weeks of each other. This evidence suggests that all disputed domain names were registered by or at the direction of a single entity, therefore there is a high probability that a single entity exercises common control over the disputed domain names.
2. The analysis further shows that the index pages of all websites within Group I and Group II have virtually identical structures. Therefore, it is highly probable that the websites in Group I and Group II were created using a single, shared template that was replicated between the websites. This evidence suggests that there is a high probability that a single entity exercises common control over the websites to which the Group I and Group II domain names resolve.
3. The analysis further shows that each of the websites within Group I and Group II have particular characteristics traits. The analysis further shows that these characteristic traits are common to sub-groups within and between Group I and Group II. This evidence suggests that it is highly probable that the Group I and Group II Websites were implemented at the direction of a single entity and that there is a high probability that a single entity exhibits common control over all the domain names within Group III.
4. The analysis further shows that the index pages of all websites within Group III have virtually identical structures, were likely created using a single, shared template that was replicated between the websites, and that each of the websites were likely clones of other websites within Group III. This evidence suggests that there is a high probability that a single entity exhibits common control over the websites to which the Group III domain names resolve.
5. The analysis further shows that most of the websites within Group III have a hidden page that includes information associated with unrelated websites and that the hidden page has content matching one of the hidden pages used by most of the websites within Group I and Group II. The analysis further shows that two of the websites within Group III have two distinguishing structural elements that are both present in the two analogous websites within Group I and Group II. This evidence suggests that a single entity exhibits common control over all websites within Group I, Group II, and Group III.
6. The analysis further shows it is highly probable that the disputed domain names that do not currently resolve to a website or resolve to a placeholder website will be updated to resolve to a website matching the websites of Group III. This evidence suggests that there is a high probability that a single entity exercises common control over all the domain names within Group III.
Based on the evidence presented herein, it is my opinion that a single entity exercises common control over the disputed domain names and the websites to which the disputed domain names resolve”.
The Panel concurs with the Expert opinion. It is quite clear that all of the Disputed Domain Names have been registered as part of a large sale and sophisticated attempt to establish a large number of websites which target the Complainant and its products (see below). Accordingly the Panel agrees with the Complainant that the Disputed Domain Names are under common control. Consolidation would be fair and equitable to all Parties as it will result in considerable savings in cost and is clearly convenient. The Panel finds that consolidation is appropriate for the present proceeding.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in the THURSDAY BOOTS trademark. The Panel finds each of the Disputed Domain Names is confusingly similar to the THURSDAY BOOTS trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is recognizable within the disputed domain name, the disputed domain name is considered to be confusingly similar to the mark (WIPO Overview 3.0 at section 1.7).
In the present case, the Disputed Domain Names combines the essential elements of the Complainant’s THURSDAY BOOTS trademark with a geographic or (in three cases) a descriptive term (“stores”, “outlet”, and “captain”, with the latter being the name of one of the Complainant’s styles of boot). It is well established that the addition of a geographic or descriptive term to a domain name does not prevent a finding of confusing similarity between the domain name and the mark (see, e.g., WIPO Overview 3.0 at section 1.8). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. See, WIPO Overview 3.0 at section 1.11.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
“(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 organisation) 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.”
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the THURSDAY BOOTS trademark. The Complainant has prior rights in the THURSDAY BOOTS trademark which precede the Respondents’ registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names, and thereby the burden of production shifts to the Respondents to produce relevant evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in any of the Disputed Domain Names. Accordingly, the Panel finds the Respondents have no rights or any legitimate interests in any of the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithIn the present circumstances, the Panel concludes that the Respondents chose to register the series of Disputed Domain Names confusingly similar to the Complainant’s THURSDAY BOOTS trademark in order to facilitate a business where the Respondents’ Websites could offer for sale goods which purport to be branded THURSDAY BOOTS goods. Manifestly, the choice of the series of confusingly similar Disputed Domain Names was not coincidental. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondents were seeking to attract customers by creating a likelihood of confusion with the Complainant’s THURSDAY BOOTS trademark. The Respondents’ Websites are all part of a scheme to create a range of websites that masquerade as websites operated by or with the authority of the Complainant when that is not the case. The Disputed Domain Names are clearly intended to assist in that deception. The Complainant’s evidence shows that customers have been deceived.
The Panel conclude it is more likely than not, that those of the Disputed Domain Names linked to PPC webpages have simply not yet been used in the Respondents’ fraudulent scheme. In any event it is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of an association with the Complainant or its trademarks, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
Further indications of bad faith exist – for example the fact that the individual Respondents appear to have provided false names and address details. It is not necessary for the Panel to go through all the detail of other indications of bad faith – for the reasons set out above the Panel considers the position is clear.
The Panel also notes that the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of good faith that they might have. The Panel infers that none exists.
Accordingly, the Panel finds that each of the Disputed Domain Names has been registered and are being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names
Nick J. Gardner
Sole Panelist
Date: February 28, 2022