WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TBL Licensing LLC v. Swen Schulz
Case No. D2020-0324
1. The Parties
The Complainant is TBL Licensing LLC, United States of America (“United States” or “US”), represented by SILKA Law AB, Sweden.
The Respondent is Swen Schulz, Germany.
2. The Domain Name and Registrar
The disputed domain name <timberlandhungary.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 February 17, 2020, 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 amendment to the Complaint on February 17, 2020.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2020.
The Center appointed Zoltán Takács as the sole panelist in this matter on March 29, 2020. 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 language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant’s Licensor, Timberland LLC is an American manufacturer and retailer of outdoors footwear and apparel, selling its products through more than 200 company owned stores worldwide.
The Complainant’s portfolio of trademarks consisting of or comprising the TIMBERLAND trademark, include:
- United States Trademark Registration No. 1300704 for the word mark TIMBERLAND, registered on October 16, 1984, for goods of class 25 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“The Nice Classification”), and
- European Union Trade Mark Registration (“EUTM”) No. 000164525 for the word mark TIMBERLAND, registered on June 22, 1998, for goods of classes 18 and 25 of the Nice Classification.
Since April 24, 1995, the Complainant owns the domain name <timberland.com>, which links to the principal website of Timberland LLC.
The disputed domain name <timberlandhungary.com> was registered on June 2, 2019, and pointed to a Hungarian language website selling discounted TIMBERLAND branded goods.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, <timberlandhungary.com> is confusingly similar to its TIMBERLAND trademark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent registered the disputed domain name with full knowledge of the TIMBERLAND trademark and used it to mislead consumers into believing that the related website is endorsed by the Complainant. The Complainant contends that the Respondent’s misappropriation of its TIMBERLAND trademark and use of its copyright protected images without authorization amount to registration and use of the disputed domain name in bad faith.
The Complainant requests that the disputed domain name <timberlandhungary.com> be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests 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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the TIMBERLAND trademark. For the purpose of this proceeding, the Panel establishes that the US Trademark Registration No. 1300704 and EUTM No. 000164525 for the word mark TIMBERLAND satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain name <timberlandhungary.com> is identical or confusingly similar to the Complainant’s TIMBERLAND trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s TIMBERLAND trademark is evidently recognizable within the disputed domain name <timberlandhungary.com>, which differs from the Complainant’s TIMBERLAND trademark only in the addition of the geographical term “Hungary”, the market to which the disputed domain name is directed to.
It is well established in previous UDRP cases that addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity.
The Panel finds that the disputed domain name <timberlandhungary.com> is confusingly similar to the Complainant’s TIMBERLAND trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the TIMBERLAND trademark.
The Complainant has never authorized the Respondent to use its TIMBERLAND trademark in any way, and its prior rights in the TIMBERLAND trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The website to which the disputed domain name <timberlandhungary.com> points prominently features the Complainant’s TIMBERLAND trademark, its logo and product images. In the Panel’s opinion, this demonstrates that the Respondent knew of the Complainant’s TIMBERLAND trademark and chose to register and use the disputed domain name to exploit the reputation behind the TIMBERLAND trademark without any authorization or rights to do so.
Further, the Respondent is not only using the Complainant’s TIMBERLAND trademark and copyright protected images without authorization. At the website to which the disputed domain name resolve the Respondent has added the note: “Copyright© 2020 www.newtimberlandcheap.com. Powered by Timberland Cipő Webáruház”, which creates false impression that the Respondent has rights in the name TIMBERLAND.
The Respondent’s lack of any rights to or legitimate interests in the disputed domain name, absence of any conceivable good faith use of the disputed domain name by the Respondent, the Respondent’s failures to react and respond to the compelling evidence submitted by the Complainant convince the Panel that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <timberlandhungary.com> be transferred to the Complainant.
Date: April 6, 2020