WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DUO Bootmakers Ltd v. Dominykas Savickij, DuoBoots.shop and Rolandas Aleksandravicius, Rolandon
Case No. D2019-1413
1. The Parties
The Complainant is DUO Bootmakers Ltd, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondents are Dominykas Savickij, DuoBoots.shop, United Kingdom and Rolandas Aleksandravicius, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <duoboots.shop> and <duoboots.store> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2019. On June 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the 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 June 21, 2019, 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 the same day. As per to the Complainant’s request for consolidation in the amended Complaint due to the disclosure of multiple Respondents by the Registrar, the Center sent to the Parties a prima facie consolidation email on June 26, 2019.
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 Respondents of the Complaint, and the proceedings commenced on June 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 17, 2019.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 24, 2019. 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. Consolidation of Proceedings
The Complainant requests consolidation of the proceedings in respect of the two disputed domain names on the recognized grounds that (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see e.g. section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant submits in this regard that; the postal addresses of the two named Respondents are identical save for one different letter in the postal code; that the email contact address of one Respondent (“savickindominykas@[...]”) is distinctive and highly similar to the name of the other Respondent (Dominiykas Savickij); that the two disputed domain names are very similar in nature; that both are registered with the same registrar; and that in response to a cease and desist letter from the Complainant, one of the Respondents replied with an offer to sell both of the disputed domain names.
Based on the above submissions and the absence of any objection on the part of the Respondents, the Panel finds that consolidation of the proceedings is appropriate in this case.
5. Factual Background
The Complainant is a bootmaker located in Frome, United Kingdom. It was founded by individuals named Ted and Muffy Maltby and has traded for over 40 years.
The Complainant is the owner of United States of America (“United States”) trademark number 3974814 for the word mark DUO BOOTS registered on June 7, 2011 in Class 25.
The Complainant has also utilized the following logo (“the DuoBoots Logo”):
The disputed domain name <duoboots.store> was registered on May 2, 2019. The disputed domain name <duoboots.shop> was registered on May 13, 2019.
Until June 5, 2019, the disputed domain name <duoboots.shop> resolved to a website at “www.duoboots.shop” which prominently featured a logo similar to the DuoBoots Logo and purported to offer boots and other footwear for sale.
Following a cease and desist letter from the Complainant to the Respondents dated June 5, 2019, both of the disputed domain names have been inactive.
The Complainant submits evidence that, in the course of correspondence following from that cease and desist letter, the Respondents offered to sell the disputed domain names to the Complainant for GBP 2,000.
6. Parties’ Contentions
The Complainant submits that it has gained a substantial reputation for specialist fitted boots in particular and has operated a website at “www.duoboots.com” since 2004. It states that it exports to 132 countries and provides evidence of its online sales activities under the DUO BOOTS mark and of industry recognition and awards as well as international media coverage. It also submits evidence of a substantial presence on social media.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark in which it has rights. It relies both on its United States registered trademark referred to above and upon the reputation that it claims to result from its longstanding use of the DUO BOOTS mark in commerce. The Complainant submits that the disputed domain names are identical to its DUO BOOTS trademark but for the addition of the generic Top-Level Domains (“gTLDs”) “.shop” and “.store” respectively, which it submits should be disregarded for the purposes of comparison.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant submits that the Respondents have no trademark rights in the name DUO BOOTS and have not been commonly known by any name which corresponds to the disputed domain names. The Complainant further submits that the Respondents are not making either bona fide commercial use or legitimate noncommercial or fair use of the disputed domain names. The Complainant says that neither the use of one of the disputed domain names to pass off the Respondents’ websites as that of the Complainant, nor the present non-use of the disputed domain names, is capable of giving rise to rights or legitimate interests.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant submits that the each of the disputed domain names comprises an unadorned use of the Complainant’s distinctive trademark DUO BOOTS with only a gTLD which indicates retail activity. Further, the Complainant points to the Respondents’ use of the disputed domain name <duoboots.shop> for the purpose of an online store which contained a close copy of the DuoBoots Logo and other material which the Complainant submits was copied from its own website. The Complainant contends that these matters amount to passing off. The Complainant also relies on the Respondents’ attempt to sell the disputed domain names to the Complainant after receipt of its cease and desist letter and submits that GBP 2,000 is a sum well in excess of the Respondents’ out-of-pocket costs directly related to the disputed domain names. In addition, the Complainant submits that the Respondents’ recent non-use of the disputed domain names does not preclude a finding of bad faith where all the circumstances of the case point to that conclusion.
The Complainant requests the transfer of the disputed domain names.
The Respondents did not reply to the Complainant’s contentions.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and;
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its ownership of a registered trademark DUO BOOTS and the Panel further accepts that the Complainant has used the mark DUO BOOTS in commerce such that the mark has become distinctive of the Complainant and its products. Each of the disputed domain names comprises an unadorned use of the Complainant’s mark DUO BOOTS together with a gTLD, respectively “.shop” and “.store”, which the Complainant correctly submits are to be disregarded for the purposes of comparison.
The Panel therefore finds that each of the disputed domain names is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondents to answer that the Respondents have no rights or legitimate interests in respect of the disputed domain names. However, the Respondents have not participated in this administrative proceeding and have not provided any explanation for the registration of the disputed domain names or their use as described above, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Having no other evidence of any rights or legitimate interests on the Respondents’ part, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Having found that each of the disputed domain names comprises an unadorned use of the Complainant’s distinctive trademark DUO BOOTS together with a gTLD indicating retail, and in the absence of any response from the Respondents, the Panel can only reasonably infer that the Respondents registered and have used each of the disputed domain names with the intention of taking unfair advantage of the Complainant’s goodwill in its DUO BOOTS trademark.
That inference is reinforced by the Respondents’ use of the disputed domain name <duoboots.shop> for a website which reproduced a close copy of the DuoBoots Logo and offered footwear for sale online. The Panel finds that, in this regard, by using the disputed domain name <duoboots.shop>, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or of products on their website (paragraph 4(b)(iv) of the Policy).
The Panel accepts the Complainant’s further submission that the Respondents’ offer to sell the disputed domain names to the Complainant for GBP 2,000 provides further evidence of bad faith.
The Panel also accepts that the recent non-use (or passive holding) of the disputed domain names does not preclude a finding of bad faith where the other circumstances of the case point to that conclusion (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds in all the circumstances that the disputed domain names have been registered and are being used in bad faith.
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 names <duoboots.shop> and <duoboots.store> be transferred to the Complainant.
Steven A. Maier
Date: August 6, 2019