WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samuel Hubbard Shoe Company LLC and Werner Wyrsch v. Cyrus Jennings
Case No. DEU2018-0007
1. The Parties
Complainant is Samuel Hubbard Shoe Company LLC of Mill Valley, California, United States of America (“First Complainant”) and Werner Wyrsch of Guimaraes, Portugal (“Second Complainant”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Cyrus Jennings of Drancy, France.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <samuelhubbard.eu> (“Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Domain Name is Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 15, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On March 16, 2018, the Registry transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the ”Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was May 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on May 14, 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 ADR Rules, Paragraph B(5).
On June 5, 2018, the Panel issued a Panel Order to which Complainant replied on June 8, 2018 to which the Respondent did not reply.
Language of the Proceeding
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
According to the Complaint, first Complainant is a company with headquarters in Mill Valley, California, United States of America (“USA”), active in the shoe industry. First Complainant, as per Complaint, continues an old family tradition in this industry that started in 1930 when the ancestors of its current CEO and founder (Bruce Katz) founded the Hubbard Shoe Company, a shoe factory in Rochester, New Hampshire, USA. This business operated until 1973. As per Complaint, the Katz family had also started the Rockport shoe company, which was sold to Reebok in 1986. In 2012, Bruce Katz and the second Complainant formed, as per Complaint, first Complainant, in order to create and sell shoes that mix comfort and style, drawing from their long experience in the shoe industry. Samuel Katz was the name of Bruce Katz’ s grandfather that started the family business Hubbard Shoe Company.
Second Complainant owns Class B shares in first Complainant. As per Complaint, he is the former head of Rockport manufacturing and is responsible for first Complainant’s sourcing and distribution in Europe, including the procurement of leathers and soles in the European Union and acting as liaison to first Complainant’s third-party factories in Portugal.
First Complainant has a strong Internet presence through the website “www.samuelhubbard.com”. The domain name <samuelhubbard.com> was registered in the name of its CEO, Bruce Katz, on September 17, 2013.
As per Complaint, the SAMUEL HUBBARD mark has been used by Complainants since August 16, 2014. It is well recognized by consumers and industry peers due to its extensive use and significant investments in advertising and promotion, offering comfort shoes of the highest quality using European leathers. As per Complainants, during the past year, Samuel Hubbard has sold shoes in Europe through distributors in Belgium, Spain, Sweden, and Germany, while it also sells wholesale to stores located across the USA.
First Complainant is the owner of a number of trademark registrations for SAMUEL HUBBARD since as early as 2013, filed with United States Patent and Trademark Office, WIPO and European Union Intellectual Property Office (“EUIPO”). First Complainant’s trademark registrations for the SAMUEL HUBBARD mark include European Union word trademark registration SAMUEL HUBBARD no. 012191276, filed on October 2, 2013, registered on March 21, 2014, for goods and services in classes 18, 25 and 35.
The Domain Name was registered on August 25, 2017 and resolves to a pay-per-click website displaying links to Complainants’ competitors’ websites.
5. Parties’ Contentions
Complainants assert that they have established all elements required under Article 21(1) of the Commission Regulation (EU) No. 874/2004 (“the Regulation”) and Paragraph B(11)(d)(1) of the ADR Rules for a transfer or revocation of the Domain Name.
Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Procedural Matter: Multiple Complainants
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).1
Second Complainant is the owner of Class B shares in first Complainant and, according to the Complaint, as co-owner and partner of first Complainant, is responsible for first Complainant’s sourcing and distribution in Europe.
Complainants have established that they both have an interest in the Domain Name and with that common grievance against Respondent and it would be equitable and procedurally efficient to permit the consolidation of the Complaint. The Panel accepts Complainants jointly filing the Complaint in this matter (Skorpio Limited and Owenscorp v. Identity masked by EU data protection / Jenniese Daivis, WIPO Case No. DEU2018-0005; Helinox Inc. and Helinox Europe B.V. v. Helinox Development, WIPO Case No. DEU2018-0001; Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001; N.M Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan, WIPO Case No. D2016-2508; Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado, WIPO Case No. D2010-0170).
6.2 Substantive Matters
Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the domain name has been registered or is being used in bad faith.
Furthermore Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
First Complainant has demonstrated rights through registration and use on the SAMUEL HUBBARD mark, including the European Union Trademark registered on March 21, 2014 with the EUIPO.
The Panel finds that the Domain Name <samuelhubbard.eu> is identical to the SAMUEL HUBBARD trademark of first Complainant.
The Domain Name incorporates the trademark of first Complainant in its entirety. The country code
Top-Level Domain (“ccTLD”) “.eu” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel therefore finds that Complainants have established the first element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Under Paragraph B(11)(e) of the ADR Rules, a respondent may demonstrate its rights or legitimate interests to the domain name for purposes of Paragraph B(11)(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation:
(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainants, Respondent was not authorized to register the Domain Name.
Complainants have established that they have no relation with Respondent and have never authorized Respondent to use the SAMUEL HUBBARD trademark in any way and that Respondent is not commonly known by the Domain Name.
Complainants have demonstrated that Respondent used the Domain Name to host a pay-per-click (“PPC”) parking page, with links to various third-party websites, some of which directly compete with Complainants’ business, offering shoes and footwear. As per Complainants, presumably Respondent received pay-per-click fees from the linked websites that were listed at the Domain Name’s website and used the Domain Name for his own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with Complainants’ trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; WIPO Overview 3.0, section 2.9).
This also indicates that Respondent knew of Complainants and chose the Domain Name with knowledge of Complainants and their industry competitors (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).
These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
Complainants have established Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad Faith
There is no need to separately address bad faith registration or use, in view of Panel’s finding that Respondent has no rights or legitimate interests in the Domain Name. However, in this case the Panel briefly considers that the Domain Name has also been registered and used in bad faith.
Because the SAMUEL HUBBARD mark is a fictitious combination of words incorporating a natural person’s name and therefore highly distinctive and it had been widely used and registered by Complainants at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had first Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).
Respondent could have searched the United States or European Union trademark registries and should have found first Complainant’s prior registrations in respect of SAMUEL HUBBARD (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Respondent should have known about first Complainant’s rights, due to the fact that first Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of SAMUEL HUBBARD mark on the Internet (“www.samuelhubbard.com”) (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Complainants have demonstrated that the Domain Name was employed to earn pay-per-click revenues for directing Internet users to third parties’ websites. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).
Furthermore, as Complainants have demonstrated, the Domain Name is being offered for sale, through “www.sedo.com”, at the amount of USD 9,999, which overly exceeds out-of-pocket costs directly related to the Domain Name. This, also in view of the finding that Respondent has no right to or legitimate interest in the Domain Name, constitutes further evidence of bad faith (Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainants have established the third element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules.
7. Complainants’ Entitlement to Transfer
Article 22(11) of the Regulation states that “(…) The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733/2002,” which provision is reflected in paragraph B(11)(b) of the ADR Rules. As Article 4(2)(b) of Regulation (EC) 733/2002 provides that the registry shall “register domain names in the .eu TLD (…) by any (iii) natural person resident within the Community”, the second Complainant satisfies such general eligibility criteria.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name <samuelhubbard.eu> be transferred to the second Complainant.
Date: June 16, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to the UDRP jurisprudence where instructive.