The Complainants are Travismathew, LLC, United States of America (“United States”) (“First Complainant”) and Jack Wolfskin Ausrüstung Für Draussen GMBH & CO. KGaA, Germany (“Second Complainant”), represented by SILKA AB, Sweden.
The Respondent is Rūdis Berzins, Latvia.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On September 30, 2021, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 5, 2021, the Complainant sent a missing annex.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.
The Center appointed Indrek Eelmets as the sole panelist in this matter on November 19, 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 ADR Rules, Paragraph B(5).
Further to the request filed by the Complainant to proceed in English instead of Czech, the language of the ADR Proceeding shall be English in accordance with paragraph A(3)(c) of the ADR Rules. See Callaway Golf Company, Travismathew LLC and Jack Wolfskin Ausrüstung Für Draussen GmbH & CO. KGAA v. Rūdis Berzins,WIPO Case No. DEUL2021-0004.
4. Factual BackgroundThe Complainant is a sportswear and lifestyle apparel manufacturer with presence in the United States and European and Asian markets. The Complainant operates its online activities worldwide under a number of domain names consisting of the TRAVISMATHEW mark and the corresponding Top-Level Domains (“TLD(s)”), such as
The Complainant is the owner of the TRAVISMATHEW mark, holding a trademark portfolio internationally, including the following European Union trademark registrations:
- European Union Trademark nº 017932604 TRAVISMATHEW (word mark), registered on November 29, 2018, in international classes 18, 25 and 28.
- European Union Trademark nº 017932606 TRAVISMATHEW (figurative), registered on November 29, 2018, in international classes 18, 25 and 28.
The Domain Name was registered on July 24, 2020 by the Respondent. On the date of the Decision, the Domain Name was not active as it did not resolve to any website. Previously, until June 8, 2021, the Domain Name redirected to adult-oriented websites.
5. Parties’ Contentions A. ComplainantThe Complainant contends the following.
The Complainant provides evidence of European Union trademark registrations. Said registrations demonstrate the Complainant’s rights in the TRAVISMATHEW mark under the ADR Rules. The Domain Name is identical to the TRAVISMATHEW trademark as the Domain Name wholly incorporates the mark and does not include any additional terms beyond the “.eu” country-code Top-Level Domain (“ccTLD”).
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a licensee of the Complainant, and it has not received any consent, permission or acquiescence from the Complainant to use its TRAVISMATHEW mark in association with the registration of the Domain Name. There is no evidence that the Respondent has been commonly known by the Domain Name. There is no evidence that the Respondent holds any trademarks on TRAVISMATHEW or the Domain Name. Nothing suggests that the Respondent has ever operated under the name “travismathew”. On the contrary, a Google search of “travismathew” reveals that the results of such search are referred to the Complainant. There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Domain Name. the Domain Name redirected to websites containing pornographic content. Since this adult-oriented content may have the effect of tarnishing the Complainant’s trademark, it cannot be considered a bona fide offering of goods or services (e.g. Ogilvy & Mather Worldwide v. Robert Hol’kin,WIPO Case No. D2020-1367). The Complainant sent a communication to the Registrar of the Domain Name requesting its suspension and the removal of the website hosted by the Domain Name. In reply to said communication, the Registrar informed the Complainant that the Domain Name is inactive and that “the owner informed us that the domain name has been removed”. Hence, the Respondent did not provide any explanation on the use of the Domain Name and removed the content of the website in accordance with the Complainant’s request. In the Complainant’s view the Respondent’s behavior may raise a further inference that the Respondent has no rights of legitimate interests in the Domain Name.
The Domain Name was registered in bad faith as the Registrant had the Complainant’s rights in mind at the time of registration of the Domain Name, which amounts to a registration in bad faith. The Complainant registered and is using its TRAVISMATHEW mark since at least the year 2007, well before the registration of the Domain Name. In addition, the Domain Name reproduces entirely the Complainant’s TRAVISMATHEW mark with the only addition of the ccTLD “.eu”, and is almost identical to the Complainant’s Domain Names
Further, the Domain Name was used in bad faith as the Domain Name redirected to websites displaying adult-oriented content. Many panels under the Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 and under the ADR Rules have stated that the use of a Domain Name to host adult-oriented content amounts to bad faith use. See, for instance, ED&F Man Holdings Limited v. DV Villes,WIPO Case No. DEU2018-0023). Given the identity between the Domain Name and the Complainant’s TRAVISMATHEW mark, together with the use that the Respondent is making of the Domain Name, it can be concluded that the Respondent is using the Complainant’s TRAVISMATHEW mark in the Domain Name to trade off the Complainant’s reputation, and to misleadingly divert Internet users to its own website. Therefore, the Respondent registered and is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the website, which amounts to bad faith in line with paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to Paragraph B(11)(d) of the ADR Rules the Panel shall issue a decision granting the remedies requested by the Complainant in the event that the Complainant proves the following three elements:
(i) The Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) The Domain Name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union lawThe Panel finds that the Complainant has established that it has rights in the TRAVISMATHEW trademark.
The Domain Name incorporates the trademark in its entirety. It is accepted case law that the “.eu” ccTLD should be disregarded for assessing identity or confusing similarity. The Panel finds that the Domain Name is identical to the TRAVISMATHEW trademark.
Therefore, the Panel holds that the Complainant has established the first element of Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate InterestsThe Panel finds that the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph B(11)(e) of the ADR Rules outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the Domain Name. These circumstances are:
(1) prior to any notice of the dispute, the Respondent has used the Domain Name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organisation or natural person, has been commonly known by the Domain Name, even in the absence of a right recognised or established by national and/or European Union law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the Domain Name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national law and/or European Union law.
According to prior ADR panel decisions, the complainant needs to make out a prima facie case that the respondent lacks rights or legitimate interests and then the onus shifts to the respondent to rebut the assertion that the respondent lacks rights or legitimate interests (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent did not reply to the Complainant’s contentions. There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not authorized or given consent to the Respondent to register the Domain Name identical to the TRAVISMATHEW trademark. Further, in the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is also supported by the fact that the Respondent used the Domain Name in connection with websites displaying adult-oriented content and ceased the use of the Domain Name after receiving the Complainant’s request, without providing any explanations on the use of the Domain Name. Prior panels have found that the use of a domain name to host adult-oriented content amounts to bad faith use (for instance, ED&F Man Holdings Limited v. DV Villes,WIPO Case No. DEU2018-0023).
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Complainant has established the second element of Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad FaithHaving established that the Domain Name is identical to the Complainant’s trademark and it has been registered by the Respondent without rights or legitimate interest in the name, it is not necessary for the Complainant to show, or for the Panel to make a decision, that the Respondent registered or is using the Domain Name in bad faith. However, for the sake of completeness of the case, the Panel concludes that the evidence and arguments submitted by the Complainant show that the Domain Name has been registered and is used in bad faith by the Respondent.
The Panel notes that the Complainant has made significant efforts to promote its goods under the TRAVISMATHEW mark in many countries internationally, including the European Union. As the Domain Name is identical to the Complainant’s trademark the Panel finds it very likely that the Respondent had the Complainant’s TRAVISMATHEW mark in mind when registering the Domain Name, and that the Domain Name was registered precisely in order to target the Complainant and its trademark.
Consequently, the Panel finds that the Complainant has also established the third element of Paragraph B11(d)(1)(iii) of the ADR Rules.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name
Indrek Eelmets
Sole Panelist
Date: December 16, 2021
1 Given the similarities between the UDRP and the ADR Rules, the Panel will refer to the UDRP and the WIPO Overview 3.0 when relevant.
2 (i) The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.
(ii) Both Complainants are wholly-owned subsidiaries of the US company Callaway Golf Company and thus have a common interest in this proceeding. The Second Complainant is registered in Germany and satisfies the general eligibility criteria for registration set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.