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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hunter Boot Limited v. Lena Fishman

Case No. DAU2018-0025

1. The Parties

The Complainant is Hunter Boot Limited of South Queensferry, United Kingdom of Great Britain and Northern Ireland, (“UK”) represented by DLA Piper Australia, Australia.

The Respondent is Lena Fishman of St Kilda, Victoria, Australia, self‑represented.

2. The Domain Name and Registrar

The disputed domain name <hunterbootsaustralia.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 10, 2018, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On August 17, 2018, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 28, 2018 to correct an administrative formality.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 28, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2018. No formal Response was received by the due date. On September 18, 2018, the Respondent sent an email to the Center requesting an extension of time in which to file a Response. The Center notified the Parties that it would proceed to panel appointment on September 20, 2018.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 4, 2018. 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.

The Panel has considered the contents of the Respondent’s email communication of September 18, 2018, and refers to it later in this decision.

4. Factual Background

Established in 1856, the Complainant is a manufacturer of footwear, clothing and accessories. Its products, which include Wellington Boots, trainers, loafers, sliders, boot socks, raincoats, jackets, bags and umbrellas, are sold in approximately 53 countries.

The Complainant owns a large number of trademark registrations, in a range of countries, that consist of or incorporate the word “hunter”, including UK Trademark Registration No. UK00001263495 for the word trademark HUNTER (registered from March 26, 1986) and Chinese Trademark Registration No. 9257107 (registered from March 25, 2011) for the word trademark HUNTER BOOTS.

The Complainant operates its official website at “www.hunterboots.com”, at which consumers can view images of, obtain information about, and make purchases of, its products. The Complainant expends significant sums per annum on advertising, marketing and promotional materials to promote its trademarks in connection with its product range.

According to the registrar verification, the disputed domain name was created (i.e., first registered) on May 24, 2013. No evidence has been provided as to who was the registrant of the disputed domain name at the date of its creation. According to the registrar verification, the disputed domain name was registered to the Respondent on July 4, 2018.

The Respondent is a sole trader who has traded under the registered business name “The Detail Australia” since October 12, 2013. On September 25, 2015, the Complainant and the Respondent entered into a Distribution Agreement, whereby the Complainant appointed the Respondent as the exclusive distributor of the Complaint’s products in Australia and New Zealand. The Distribution Agreement came into effect on January 1, 2016. It provided that, upon termination of the Agreement, the Respondent would (among other things): (i) cease using the Complainant’s trademarks; (ii) not thereafter use or register any words or marks that incorporate, are substantially similar or closely resemble the Complainant’s trademarks so as to be likely to cause confusion; and (iii) provide the Complainant with a comprehensive list of unsold stock. The Distribution Agreement was terminated by the Complainant with effect from June 22, 2017.

The Complainant provided screenshots of the website at “www.web.archive.org” showing that on various dates between July 2017 and April 2018 the disputed domain name resolved to a website at which the Complainant’s products were offered for sale using the Complainant’s HUNTER trademark. On June 9 and 10, 2018, the Complainant received emails from a customer who had ordered products from the website resolving from the disputed domain name. The customer was dissatisfied with those products, and queried the authenticity of the disputed domain name.

The Complainant’s solicitors sent a letter of demand to the Respondent on July 2, 2018, seeking (among other things) that the Respondent would procure a transfer of the disputed domain name to the Complainant. On July 9, 2018, the Respondent made a telephone call to the Complainant’s authorized representative seeking to negotiate the transfer of unsold inventory and the disputed domain name to the Complainant. Those negotiations were unsuccessful. The Complainant provided an undated screenshot (asserted to have been taken on August 1, 2018) showing that the disputed domain name resolved to a web page with the header “shopify”, stating “Sorry, this shop is currently unavailable.” As of the date of this decision, the disputed domain name resolves to a web page with those characteristics.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it incorporates the Complainant’s HUNTER and HUNTER BOOTS trademarks in their entirety; (ii) the addition of “boots” is descriptive of the goods to which the Complainant predominantly applies its HUNTER trademark, and the Complainant is also well known by its HUNTER BOOT trademark; (iii) the addition of the geographical term “australia” does not distinguish the disputed domain name from the HUNTER trademark, as there is a high likelihood that customers would perceive the disputed domain name as the online source of the Complainant’s goods in Australia; and (iv) because the Complainant does not have an Australian website that is separate from the website which it operates at “www.hunterboots.com”, consumers could mistakenly believe that the website resolving from the disputed domain name is the official website of the Complainant (and that, in fact, this mistaken belief already occurred in at least one case).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is no longer authorized by the Complainant to use its intellectual property, to sell its stock using the disputed domain name, or to represent that it is authorized by, or affiliated with, the Complainant; (ii) by continuing to operate the disputed domain name in knowing breach of its post-termination obligations under the Distribution Agreement, the Respondent is not making a bona fide offering of goods and services; (iii) the Respondent has not disclosed its true relationship with the Complainant on the website resolving from the disputed domain name; (iv) the Respondent is not, and has not previously been, commonly known by the disputed domain name, and does not hold trademark registrations with respect to “Hunter”, “Hunter Boot” or “Hunter Boot Australia”; and (v) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, as it is reasonable to infer from its conduct that the Respondent fully intends to misleadingly divert consumers and/or to tarnish the Complainant’s HUNTER trademark.

The Complainant contends that the disputed domain name has been used in bad faith because: (i) the Respondent has continued to breach its obligations under the Distribution Agreement following its termination, and to flagrantly infringe the Complainant’s intellectual property, despite receiving notice of the Complainant’s rights on at least four separate occasions; (ii) the Respondent intends to exploit confusion that is induced by diverting Internet users away from the Complainant’s website at “www.hunterboots.com” for the Respondent’s commercial gain, namely by the sale of the Complainant’s products in its possession; (iii) the Respondent has failed to provide post-purchase support to customers in breach of Australian Consumer Law, and with full knowledge that this would cause damage to the Complainant’s reputation in Australia and New Zealand; (iv) the Respondent has threatened to sell the disputed domain name and its unsold stock of the Complainant’s product to a third party, so as to leverage its negotiation with the Complainant’s authorized representative; and (v) given that the Respondent has refused to provide the Complainant with information or supporting documentation to verify the value of its remaining stock, the Respondent’s offer to sell the disputed domain name and the unsold stock for AUD 150,000 is well in excess of the cost of registration of the disputed domain name.

B. Respondent

On September 18, 2018, after the due date for submission of the Response, the Respondent sent an email to the Center stating, amongst other things: (i) “I have been working on a response to the many lies that have been presented but have run out of time”; (ii) “I was the distributor for the Hunter brand in Australia for 8 years and built the brand and retail business from nothing”; and (iii) “I traveled and met with the CEO who offered me a 3 year contract, which I am currently still in the timeline of and I bought 100000’s of stock and still had millions left, under this agreement”. No evidence in support of these assertions was provided.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the whole of the Complainant’s registered trademark HUNTER BOOTS, and adds the word “australia”. The distinctive component of the disputed domain name is the Complainant’s trademark. The addition of the geographical term “australia” does not avoid the confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent entered into a Distribution Agreement with the Complainant on September 25, 2015, to distribute the Complainant’s products in Australia and New Zealand from January 1, 2016. The Complainant terminated this Distribution Agreement with effect from June 22, 2017. Under the terms of the Distribution Agreement, the Respondent agreed that upon termination of the Agreement it would “cease using the [Complainant’s trademarks] … and shall not thereafter use or register any words or marks that incorporate or are substantially similar to or closely resemble any one or more of the [Complainant’s trademarks] so as to be likely to cause confusion”. As explained above, the Panel considers that the disputed domain name is confusingly similar to one of the Complainant’s trademarks. In the absence of any evidence from the Respondent to support an argument to the contrary, the Panel finds that pursuant to the post-termination provisions of the Distribution Agreement the Respondent currently does not have any rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

The Complainant provided screenshots showing that, following the termination of the Distribution Agreement, the Respondent continued to use the disputed domain name to resolve to a website at which the Respondent offered for sale the Complainant’s products. In the absence of any evidence from the Respondent to support an argument to the contrary, the Panel finds that this use of the disputed domain name is in breach of the post-termination provisions of the Distribution Agreement.

The website to which the disputed domain name resolved following termination of the Distribution Agreement made use of the Complainant’s trademarks but did not disclose the true relationship between the Respondent and the Complainant – namely, that the Respondent was not (any longer) an authorized distributor of the Complainant’s products. The Panel considers that the circumstances of the Respondent’s use of the disputed domain name following termination of the Distribution Agreement was an attempt to attract, for commercial gain, Internet users to its website by creating confusion in the minds of the public as to an association between the Respondent’s website and the Complainant.

For the above reasons, the Panel finds that the disputed domain name has been used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hunterbootsaustralia.com.au> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: October 18, 2018

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