WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boot Royalty Company, L.P. and Justin Brands, Inc. v. Domain Admin, Whois Privacy Corp.

Case No. D2015-2130

1. The Parties

The Complainant is Boot Royalty Company, L.P. and Justin Brands, Inc. of Fort Worth, Texas, United States of America (“United States” or “US”), represented by Kelly Hart & Hallman LLP, United States.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <tonylama.org> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2015. The Response was filed with the Center on December 20, 2015.

On December 22, 2015, the Center received a Supplemental Filing (the “Reply”) from the Complainant.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 7, 2016. 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.

On January 26, 2016, the Panel issued an Order permitting the Respondent to file a further response. On January 30, 2016, the Respondent filed its response (“Supplementary Response”).

4. Factual Background

The Complainant is a designer, manufacturer and distributor of footwear, apparel, belts and accessories. The Complainant has manufactured and sold boots under the trademark TONY LAMA since 1911, and belts since the early 1970s. The Complainant’s products are sold by approximately 3,700 retailers and distributors in over 40 countries around the world.

The Complainant owns many trademark registrations for the mark TONY LAMA, including those listed below:

TONY LAMA Design US Registration No. 0525522 dated May 23, 1950

TONY LAMA US Registration No. 0913819 dated June 8, 1971

TONY LAMA Design US Registration No. 1,088,159 dated March 28, 1978

TONY LAMA Design US Registration No. 1,220,072 dated December 14, 1982

TONY LAMA Design US Registration No. 1,382,828 dated February 11, 1986

TONY LAMA US Registration No. 4,015,811 dated August 23, 2011

The Complainant owns several domain names registrations which feature the TONY LAMA trademark, such as:

<tonylama.com>

<tonylamaboots.com>

As a result of extensive advertising and promotion, the Complainant has developed substantial reputation and notoriety in the TONY LAMA trademarks.

The disputed domain name <tonylama.org> was registered June 6, 2012, and at the time of the filing of the Complaint, reverted to a website that featured a history of the TONY LAMA brand.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns multiple registrations for the trademark TONY LAMA, including those listed in paragraph 4 of this Decision.

The Complainant contends that the disputed domain name <tonylama.org> is composed entirely of the Complainant’s TONY LAMA trademark. The Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.org” does not distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Complainant contends that the disputed domain name is identical and confusingly similar to the Complainant’s registered TONY LAMA trademark.

Rights and Legitimate interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the <tonylama.org> domain name. The Respondent is not commonly known by the name “Tony Lama”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The Complainant contends that it is unrealistic to believe that the Respondent was unaware of the Complainant’s reputation in the TONY LAMA trademark, since the Respondent’s website features certain copyrighted images of the Complainant’s TONY LAMA boots and footwear, along with a section on the history of the Complainant’s TONY LAMA brand. The Complainant submits that the Respondent has deliberately attempted to mimic the Complainant’s website to interfere with Internet traffic intended for the Complainant’s website. Furthermore, the Respondent has offered the disputed domain name for sale on through Sedo for USD 2,449, which is considerably more than out of pocket expenses for registering the disputed domain name.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <tonylama.org> in bad faith, because (i) the Respondent must have been aware of the Complainant’s registered trademark rights in TONY LAMA when the Respondent registered the confusingly similar domain name; (ii) the Respondent registered and is using a confusingly similar domain name to trade on the goodwill and reputation of the Complainant’s registered trademark by using the domain name in association with a website that mimics the Complainant’s authentic website; (iii) the Respondent has replicated copyrighted images of the Complainant’s boots and footwear on the website associated with the disputed domain name; (iv) the Respondent is offering the disputed domain name for sale for an amount higher than out of pocket expenses to register the disputed domain name on Sedo; and (v) the Respondent registered and is using a confusingly similar domain name to interfere with Internet users seeking the Complainant’s website, and instead diverting them to the Respondent’s website for purposes of monetary gain.

B. Respondent

The Respondent claims that the disputed domain name redirects to a website which is located at <sucks.tonylama.org> and is in fact a commentary website exposing the problems associated with the Complainant’s boots and shoes. The Respondent contends that “gripe” sites are an example of legitimate use and that the Respondent has a legitimate right and interest in criticizing the Complainant’s products bearing the TONY LAMA trademark. The Respondent submits that the website generates no income and there is no monetary gain from the disputed domain name or the associated website. The Respondent also contends that it did not place the disputed domain name <tonylama.org> for sale on Sedo, and suggests that the Complainant might have actually posted the disputed domain name on the Sedo site to implicate the Respondent. The Respondent claims that the disputed domain name was registered and is being used in good faith in association with a commentary website, as a result of an unsatisfactory response to a consumer complaint to the Complainant.

6. Discussion and Findings

Complainant’s Reply and Respondent’s Supplementary Response

The Policy does not explicitly provide for the filing of supplemental submissions, but leaves the admission of such filings to the discretion of the Panel. The Complainant’s Reply provides evidence that the Respondent substantially modified its website only after the filing of the Complaint. The Complainant asserts that the disputed domain name, prior to the filing of the Complaint, redirected to a website that in no way appeared to be a commentary site. The copyrighted images that originally appeared on the Respondent’s website were replaced with different images after the notification of the Complaint, and the copyright notice at the bottom of the Respondent’s website “©2013 Tony Lama” was also modified to read “©2015 Tony Lama Sucks”. The Panel is prepared to find that the timing of these significant modifications to the Respondent’s website is important to the analysis in this dispute, and accordingly, the Panel accepts the Complainant’s Reply in these circumstances. Having accepted the Reply evidence in this matter, the Panel has also received the Supplementary Response from the Respondent.

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark TONY LAMA by virtue of its trademark registrations, including those listed in paragraph 4 of this Decision.

The Panel further finds that the disputed domain name <tonylama.org> is confusingly similar to the Complainant’s registered trademark TONY LAMA. The Panel finds that the disputed domain name is identical to the Complainant’s registered trademark except for the addition of the gTLD “.org”. The addition of the gTLD “.org” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not commonly known by the name “Tony Lama”, and was never authorized or licensed by the Complainant to use the registered trademark TONY LAMA. Furthermore, the Panel is prepared to find in the circumstances of this case that the registration and use of a confusingly similar trademark in association with a website that replicates copyrighted images of the Complainant’s products, and thereby interferes with the business of the Complainant, is not evidence of a bona fide offering of goods and services. Upon review of the evidence as filed, including the Complainant’s Reply, the Panel finds that the Respondent knew of the Complainant’s trademark rights, and registered the confusingly similar domain name for purposes of monetary gain, likely through selling the disputed domain name for a price higher than the Respondent’s out of pocket expenses. The Panel rejects the Respondent’s claim that it operated a commentary website, for the reasons set out in paragraph C below. Accordingly, based on the evidence filed in this proceeding, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name <tonylama.org>.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark TONY LAMA when it registered the domain name on June 6, 2012. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by developing an associated website that replicated copyrighted images of the Complainant’s boots and footwear. The Panel finds that the Respondent registered a confusingly similar domain name to interfere with the Complainant’s business by diverting unsuspecting Internet users away from the Complainant’s website to the Respondent’s website. Additionally, the Panel finds that the Respondent offered the disputed domain name for sale at a price exceeding its out of pocket costs. The Respondent’s claim that the disputed domain name is in fact a “commentary website”, which redirects to the website at <sucks.tonylama.org> is lacking in credibility. The timing of the linkage to this “commentary website” suggests that the Respondent was actually seeking to create an ex post facto defence to its registration after it was notified that a complaint had been filed against the disputed domain name. Having been given an opportunity to expand on the timing and circumstances of the creation of the “commentary website”, the Respondent provided no substantive argument in its Supplementary Response to allow the Panel to consider the Respondent to be acting in good faith. This conduct appears to be a blatant attempt to fabricate exculpatory evidence, which the Panel views as particularly egregious.

Accordingly, the Panel finds that the Complainant has satisfied the requirement 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 disputed domain name <tonylama.org> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: February 2, 2016