WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boot Royalty Company, L.P., Justin Brands, Inc. v. Bin Jiang
Case No. D2010-1536
1. The Parties
The Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc. of Fort Worth, Texas, United States of America, represented by Kelly Hart & Hallman LLP, United States of America.
The Respondent is Bin Jiang, of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Name and Registrar
The Disputed Domain Name <justin-boots-wholesale.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 13, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 13, 2010, GoDaddy.com, Inc. 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 the Complainant on September 15, 2010 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 September 17, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 25, 2010. 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 Complainants are jointly indicated as Justin Brands, Inc. and Boot Royalty Company, L.P. They are affiliated entities with the one owning the trade names and domain names associated with the Justin Brands, Inc’s business and the other owning the trade marks, copyright materials and patents pertaining to the Justin Brands Inc’s business. Both entities also have the same principal place of business and contact information.
The Complainants’ joint business interest includes the design, manufacture, distribution and sale of footwear under a range of trade marks including JUSTIN, JUSTIN BOOTS JEL and JUSTIN ORIGINAL WORKBOOTS to approximately 3700 retailers and distributors worldwide. The said footwear business has been in existence for the past 130 years and common law use of the JUSTIN trade mark dates back to 1879. An expansive portfolio of JUSTIN registered trade marks exists, including the marks JUSTIN, JUSTIN GEAR, JUSTIN BRANDS and JUSTIN BOOTS ORIGINAL WORKBOOTS. The first United States registration is dated September 1978. The JUSTIN range of trade marks have also been registered in other countries across the world and including in China, where the Respondent is located. Business has been conducted under the JUSTIN trade name since the 1950’s and the JUSTIN business is commonly known to the public as JUSTIN, JUSTIN BRANDS, JUSTIN BOOT COMPANY and JUSTIN BOOTS. An extensive portfolio of domain names which include the JUSTIN mark also exists and includes domain names such as <justinbrands.com>, <justinboots.com> and <justinoriginalworkboots.com>.
The Disputed Domain Name was registered on July 6, 2010. The website at <justin-boots-wholesale.com> has resolved to a site promoting and reselling what appears to be the Complainants’ JUSTIN footwear products. The website included pictures of various styles of footwear, the JUSTIN Logo and Design and other elements which were identical to the elements that appear on the website of the Complainant at “www.justinboots.com”.
5. Parties’ Contentions
The Complainants contend that the Justin Footwear business constitutes a famous and global business in Western style footwear products, that goods under the JUSTIN trade mark have been sold since 1879 and that trade names including the JUSTIN mark, such as Justin Industries Inc., Justin Boot Company and Justin Brands, Inc. have been used by the Complainant since the 1950’s. The Complainants contend that today the JUSTIN business is commonly known simply as JUSTIN or JUSTIN BRANDS, JUSTIN BOOT COMPANY and JUSTIN BOOTS.
Complainants contend that their extensive use of the JUSTIN mark is not only through the physical retail premises of their retailers and distributors worldwide (constituting a number of approximately 3700) but also through online virtual stall fronts and an extensive portfolio of domain names owned by the Complainants, including <justinbrands.com>, <justinboots.com> and <justinoriginalworkboots.com>. These domain names resolve to websites that contain repeated references to the JUSTIN trade mark. Complainants contend that their JUSTIN range of trade marks and profiles also appear on Facebook, Twitter and Youtube where the JUSTIN trade mark is used to advertise and promote the Complainants’ footwear products.
The Complainants point out that the JUSTIN trade mark was used approximately 130 years prior to the date that the Respondent registered the Disputed Domain Name and that the JUSTIN trade mark was first registered approximately 32 years prior to the registration by the Respondent of the Disputed Domain Name. The Complainants advise that they registered and made use of the first JUSTIN formative domain name approximately 14 years prior to the Respondent registering the Disputed Domain Name.
The Complainants contend that their JUSTIN mark is prominently displayed not only on their clothing but also the packaging, tags and promotional material associated with the Justin footwear. They submit that the JUSTIN trade mark has become famous as a result of the Complainants’ continuous and extensive use throughout the world and that the mark is exclusively and readily associated with the Complainants.
The Complainants contend that the Disputed Domain Name is confusingly similar to their JUSTIN trade mark in that it incorporates the primary JUSTIN trade mark in its entirety, with the only difference being the addition of the descriptive terms “boots” and “wholesale” as well as two hyphens. The Complainants contend that, in fact, the addition of the word “boots” bolsters the perception that the Respondent is somehow affiliated with or sponsored by the Complainants. The Complainants contend that the Disputed Domain Name is designed to lead consumers who are searching for the Complainants, to the Respondent’s website.
The Complainants also contend that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent is not known under the name justin-boots-wholesale.com;
b) the Respondent is not using and has no intention of using the Disputed Domain Name in connection with the bona fide offering of goods or services and
c) the Respondent is not making legitimate or noncommercial or fair use of the Disputed Domain Name.
The Complainants contend that the Disputed Domain Name was registered and is being used in bad faith because the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainants and by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship and affiliation of the Respondent’s website or of a product or service on the Respondent’s website.
The Complainants advise that the Respondent has used the Disputed Domain Name and the corresponding website to pass itself off as one of the Complainants, or an authorized retailer of the Complainants’ footwear products. The Complainants submit that given the use of the Disputed Domain Name and the fact that the content on the website associated with the Disputed Domain Name included photograph imagery and trade names directly taken from the Complainants’ website at “www.justinboots.com”, the Respondent’s conduct constitutes bad faith use and registration of the Disputed Domain Name.
The Complainants contend that the Respondent’s registration and use of the Disputed Domain Name prevents the Complainants from enjoying their right to use the JUSTIN trade mark in a corresponding domain name and, in that way, disrupts Complainants’ business operations, particularly since it has a detrimental impact on the Complainants’ authorized retailers who have to bear the burden and expense of abiding by the Complainants’ trade mark guidelines. The Respondent circumvents Complainants’ requirements in this regard giving it an unfair advantage over the Complainants’ authorized retailers. This will prejudice the Complainants’ relationship with such retailers.
The Respondent’s bad faith is also evidenced, so the Complainants contend, by its failure to obtain the Complainants’ permission to use its trade mark, since the Respondent could not have been unaware of the Complainants’ trade mark.
The Complainants request that the Disputed Domain Name be transferred to Justin Brands, Inc.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove:
i) that the Disputed Domain Name is identical or confusingly similar to the mark in which they have rights;
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel will draw such inferences from the Respondent’s default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainants which has not been disputed
A. Procedural issues arising from the complaint
1). Multiple Complainants
This Complaint is made by two Complainants, both of whom claim to own rights in the JUSTIN trade mark. The Panel finds that, on the basis that the Complainants have a common legal interest in the Disputed Domain Name, arising from the fact that they are affiliated entities and have separate intellectual property rights arising from the same Justin Footwear business, it is appropriate for the Complaint to be consolidated reflecting both as independent Complainants. Reference is made to a panel decision in Zee Telefilms Ltd and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd. v. Rahul Dholakia and Oznic.com., WIPO Case No. D2001-0624, where the following passage from Ken Done, Ken Done & Associates Pty Limited and Ken Done Down Under Pty Ltd v. Ted Gibson, eResolution Case No. AF-0638 was quoted with approval:
“no provision explicitly excludes a single Complaint brought by multiple related parties with a common interest in the Disputed Domain Name. In such cases, however, the complaining parties must be meticulous in delineating the relationships among the parties, the relevant trade mark ownership interests of each party, and each party’s stake in the remedy…”
This Panel concurs, and finds that the Complainants have been properly joined in this matter.
2). The Proper Party Respondent
The Complainants hold the view that even though the Registrar identified the registrant as Bin Jiang, the fact that initial searches conducted by the Complainants reflected the registrant as Domains by Proxy Inc. shows that both parties have acted in concert to commit the acts described in the Complaint and that both should be considered Respondents. The Panel finds that no evidence was submitted to support the fact that both parties conspired to register and use the Disputed Domain Name, and accepts the information provided by the Registrar, and holds the Respondent as Bin Jiang only.
B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainants both own registered and common law rights in the trade mark JUSTIN as well as derivatives such as JUSTIN BRANDS, JUSTIN BOOTS, JUSTIN ORIGINAL WORKBOOTS and JUSTIN BOOT COMPANY.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ JUSTIN and JUSTIN BOOTS trade marks and that the addition of the descriptive matter including the word “wholesale” does not assist the Respondent in escaping a finding of confusing similarity. The Panel points out that contrary to the submissions made by the Complainants, the content of the website associated with the Disputed Domain Name is not relevant in determining confusing similarity for the purposes of paragraph 4(a) of the Policy.
The first requirement of paragraph 4(a) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds that the Respondent’s use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. On the contrary, its use of the Disputed Domain Name takes unfair advantage of the reputation of the Complainants’ various JUSTIN trade marks, and of the Disputed Domain Name’s identity to and confusing similarity with those trade marks, in order to divert Internet users seeking information about the Complainants and their goods, to the Respondent’s website and the goods promoted through it. In making this finding, the Panel takes into account that although the website to which the Disputed Domain Name resolved has been used to sell the Complainants’ JUSTIN footwear, there are other factors that affect the legitimacy of the Respondent’s use, namely that the website does not accurately disclose the Respondent’s relationship with the Complainants, that the website includes use of copyright protected material from the Complainants’ original website without permission, and that the Complainants have not expressly permitted the Respondent to resell its goods.
The Panel further finds that the Respondent is not commonly known by the Disputed Domain Name, that it is not making a legitimate, noncommercial or fair use of the Disputed Domain Name and that there is no other basis on which he could claim to have rights or legitimate interest in the Disputed Domain Name in this case. The Respondent had an opportunity to put forward a case on the basis that his use was legitimate and refute the Complainants’ claims. He did not react to the Complainants’ contentions in this regard at all.
The second requirement of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent is using the Disputed Domain Name intentionally to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website and the products offered and promoted through it. In the Panel’s view, Internet users seeking information about the Complainants’ footwear products are liable to be diverted by confusion between the Disputed Domain Name and the Complainants’ marks to the Respondent’s website for commercial gain.
In accordance with paragraph 4(b)(iv) of the Policy, these circumstances constitute evidence of registration and use of the Disputed Domain Name in bad faith. There is no evidence displacing this presumption. The third requirement of paragraph 4(a) of the Policy is satisfied.
For all the aforegoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <justin-boots-wholesale.com> be transferred to the Complainant Justin Brands, Inc.
Charné Le Roux
Dated: November 8, 2010