WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boot Royalty Company, L.P., Justin Brands, Inc. v. Qingfeng Zhang

Case No. D2011-1821

1. The Parties

The joint Complainants are Boot Royalty Company, L.P. and Justin Brands, Inc., both of Fort Worth, Texas, United States of America, represented by Kelly Hart & Hallman LLP, United States of America.

The Respondent is Qingfeng Zhang of Fuzhou, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <justinbootswholesale.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 25, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 November 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2011.

The Center appointed Keith Gymer as the sole panelist in this matter on December 14, 2011. 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The Panel notes that the contact address given for the Respondent appears to have been inaccurate, or at least out of date, as UPS reported that it was unable to deliver the hardcopy of the written notice sent by the Center, which was ultimately recorded by UPS as “abandoned by the sender and receiver” on November 22, 2011.

The Panel further notes for the record that the two Complainants joined in this Complaint have a common legal interest in the trademarks at issue. Complainants Justin Brands, Inc. and Boot Royalty Company, L.P. are affiliated entities with the same principal place of business and legal representation, and are both wholly-owned subsidiaries of J.S. Justin, Inc. and, therefore, they form part of the same larger corporate structure. The two Complainants also have a trademark licensing relationship. Justin Brands, Inc. designs, manufactures, and distributes footwear, apparel, and accessories. Justin Brands, Inc. owns the trade names and domain names associated with its business operations, but Boot Royalty Company, L.P. owns and manages the trademarks, copyrights, and patents used by Justin Brands, Inc. in its business operations. Boot Royalty Company, L.P. licenses the trademarks at issue to Justin Brands, Inc. for use in connection with Justin Brands, Inc.’s footwear, apparel, and accessories. Complainants share responsibility for monitoring and enforcing these trademark rights. Consequently, the Panel agrees that it is entirely appropriate for the two parties to be joined as “Complainant” in this dispute (cf. Boot Royalty Company, LLP, Justin Brands, Inc. v. Bin Jiang, WIPO Case No. D2010-1536).

4. Factual Background

Complainant is a leading designer, manufacturer, and distributor of footwear, apparel, and accessories. Complainant has been in business using the Justin brand since 1879. Complainant is best known for its expansive collection of western-style footwear products (e.g., cowboy boots).

Complainant holds numerous trademark registrations in the United States and many other countries, including China, for various JUSTIN marks, including the following:

Complainant also operates websites using various domain names, including <justinboots.com>, registered in 1996.

The Respondent is evidently a private individual and, according to the WhoIs record, first registered the disputed domain name <justinbootswholesale.com> on December 16, 2010.

5. Parties’ Contentions

A. Complainant

A.1 The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights

The Complaint is based on the following grounds (comprising edited extracts taken from the Complaint):

Complainant designs, manufactures, and distributes several different lines of footwear under various brand names, including in particular: “Justin,” “Justin Original Workboots”. Complainant has established significant consumer recognition and goodwill in its brand names, and “Justin” is Complainant’s most well-known brand of footwear. The “Justin” brand name is affixed to cowboy boots, work boots, and other footwear products designed, manufactured and distributed by Complainant.

Complainant’s common law use of the name “Justin” as a trademark for western-style footwear, including cowboy boots, dates all the way back to 1879. Today, the “Justin” trademark serves as the foundation for Complainant’s most expansive family of trademarks. Complainant’s family of JUSTIN trademarks includes numerous U.S. trademark registrations in the US and in other countries, including in China.

Complainant also owns significant common law rights in the trademarks cited above and in other JUSTIN-formative trademarks, all of which are used exclusively in connection with footwear manufactured or endorsed by Complainant. Complainant’s registered and common law JUSTIN trademarks are collectively referred to hereinafter as the “JUSTIN Mark.”

In addition, Complainant has operated in the footwear industry under a trade name consisting of some variation of the JUSTIN Mark since at least as early as the 1950s (e.g., “Justin Industries, Inc.,” “Justin Boot Company,” and “Justin Brands, Inc.”). Today, Complainant formally operates under the trade name “Justin Brands, Inc.,” but Complainant is also commonly known to the consuming public as “Justin,” “Justin Brands,” “Justin Boot Company,” and “Justin Boots.” The JUSTIN Mark forms the dominant portion of each of Complainant’s business names.

Complainant also makes extensive, worldwide use of the JUSTIN Mark on the Internet. Complainant owns an extensive portfolio of domain names which contain Complainant’s famous JUSTIN Mark. Complainant’s “www.justinbrands.com”, “www.justinboots.com”, and “www.justinoriginalworkboots.com” URLs resolve to websites that contain repeated references to the JUSTIN Mark. Complainant also has JUSTIN-formative usernames and profiles on Facebook, Twitter, and YouTube, wherein the JUSTIN Mark is used to advertise and promote Complainant’s footwear products.

Complainant’s rights in and to the JUSTIN Mark (as evidenced by the above-referenced trademark registrations, trade names, and domain names) long predate Respondent’s registration of the Disputed Domain Name.

The JUSTIN Mark has become famous as a direct result of Complainant’s continuous and extensive use of the mark throughout the world. The consuming public readily identifies footwear bearing the JUSTIN Mark as being high-quality goods exclusively manufactured or endorsed by Complainant.

The Disputed Domain Name is confusingly similar to Complainant’s JUSTIN Mark and infringes upon Complainant’s exclusive and undisputable rights in and to the JUSTIN Mark. The Disputed Domain Name fully incorporates Complainant’s inherently distinctive JUSTIN Mark. The Disputed Domain Name is, therefore, identical to Complainant’s JUSTIN Mark in all material respects. Complainant’s JUSTIN Mark constitutes the dominant portion of the Disputed Domain Name. This is especially true given that the JUSTIN Mark is the only inherently distinctive term in the Disputed Domain Name and it constitutes the first portion of the Disputed Domain Name. It is Complainant’s JUSTIN Mark that will grab consumers’ attention, cause consumers to wrongfully believe Respondent is affiliated with, or endorsed by, Complainant, and ultimately lure them to Respondent’s website.

Respondent’s addition of a few descriptive terms and the generic top-level domain “.com” does nothing to diminish the confusing nature of Respondent’s use of the Disputed Domain Name, as these modifiers are wholly insufficient to distinguish the Disputed Domain Name from Complainant’s JUSTIN Mark. It is well established that the mere addition of a generic top-level domain to a registered mark does not serve to adequately distinguish the domain name from the registered mark. Furthermore, the descriptive terms “boots” and “wholesale” are not enough to avoid a finding of confusing similarity. To the contrary, Respondent’s use of the term “boots” actually increases the likelihood of confusion between the Disputed Domain Name and Complainant’s famous JUSTIN Mark, because the term “boots” has an obvious relationship to Complainant’s western-style footwear business. Rather than distinguish the Disputed Domain Name from Complainant’s JUSTIN Mark, the term “boots” bolsters the illusion that Respondent is somehow affiliated with or sponsored by Complainant.

Thepanel in Boot Royalty Company, L.P., Justin Brands, Inc. v. Bin Jiang, WIPO Case No. D2010-1536 has previously found that the domain name <justin-boots-wholesale.com> was confusingly similar to Complainant’s JUSTIN Mark. The Disputed Domain Name (i.e., <justinbootswholesale.com>) is virtually identical to the domain name at issue in Boot Royalty Company, L.P., Justin Brands, Inc. v. Bin Jiang, supra (e.g., <justin-boots-wholesale.com>), and therefore, it should also be considered confusingly similar to Complainant’s JUSTIN Mark.

A.2 Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

Respondent has no rights or legitimate interests in the Disputed Domain Name. First, Respondent is not commonly known by the Disputed Domain Name, and to Complainant’s knowledge, Respondent does not own a mark that is the same as or similar to the Complainant’s JUSTIN Mark. Second, Complainant has not authorized or otherwise licensed Respondent the right to use its JUSTIN Mark. Third, Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. And fourth, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers.

Despite extensive searches, Complainant was unable to find any JUSTIN trademark registrations or applications in Respondent’s name, which supports Complainant’s position that Respondent has no rights or legitimate interests in the JUSTIN Mark or the Disputed Domain Name.

Complainant has never authorized Respondent to use the JUSTIN Mark or otherwise licensed the JUSTIN Mark to Respondent. Respondent is not, and has never been, an authorized retailer, distributor, or seller of Complainant’s footwear products. Indeed, Complainant has no relationship with Respondent. Rather than seek Complainant’s permission to use the JUSTIN Mark, Respondent elected to hijack Complainant’s JUSTIN Mark for use in its illegitimate online business.

In addition to the fact that Respondent has no rights in and to the JUSTIN Mark or the Disputed Domain Name, Respondent is not using the Disputed Domain Name in connection with a bona fide offering of legitimate goods or services. The Disputed Domain Name currently resolves to a website with “click through” advertising links for cowboy boots. Some of these links resolve to websites where the footwear products of Complainant’s competitors are sold. It is well established that Respondent’s use of the Disputed Domain Name to generate revenue through “click through” advertisements does not constitute a bona fide offering of goods or services.

It is also well known that websites like Respondent’s website generate substantial revenue from “click through” advertising. Consequently, it is very likely that Respondent pirated Complainant’s JUSTIN Mark and uses the Disputed Domain Name for the purpose of earning “click through” revenue. Indeed, there is no other logical explanation for Respondent’s use of the Complainant’s JUSTIN Mark in the Disputed Domain Name. Respondent’s use of the Disputed Domain Name in this manner should not be considered a noncommercial or fair use of the Disputed Domain Name. In fact, it is quite the opposite. Respondent’s use of the Disputed Domain Name constitutes a deliberate and transparent attempt by Respondent to unfairly use Complainant’s reputation and goodwill for its own private commercial gain. When consumers arrive at Respondent’s website and click on the hyperlinks embedded in the website, they are directed to third-party websites selling Complainant’s footwear products and the footwear products of Complainant’s competitors. In exchange for misleadingly diverting consumers from the Complainant’s website, Respondent is compensated by the third-parties, whose websites are linked to Respondent’s “click through” advertisements. By engaging in this scheme, Respondent unfairly trades on Complainant’s hard-earned goodwill in the JUSTIN Mark and unjustly profits from the consumer confusion caused by its use of the JUSTIN Mark in the Disputed Domain Name.

Respondent’s use of the Disputed Domain Name is therefore not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name.

A.3 Respondent registered and is using the Disputed Domain Name in bad faith.

Respondent’s bad faith registration and use of the Disputed Domain Name are beyond dispute. The following facts conclusively establish Respondent’s bad faith:

(i) Respondent had knowledge of Complainant’s rights in and to the JUSTIN Mark at the time it registered the Disputed Domain Name and purposefully and willfully engaged in the unauthorized use of the JUSTIN Mark anyway;

(ii) Respondent’s use of the Disputed Domain Name violates the concerned registrar’s Registration Agreement; and

(iii) Respondent uses the Disputed Domain Name to attract consumers to its website for commercial gain by creating a likelihood of confusion with the Complainant’s JUSTIN Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Respondent’s bad faith registration of the Disputed Domain Name is evidenced by its failure to obtain Complainant’s permission to use the JUSTIN Mark before registering the Disputed Domain Name despite Respondent’s knowledge of Complainant’s exclusive rights in and to the JUSTIN Mark. Respondent registered the Disputed Domain Name well after the Complainant had engaged in extensive worldwide use of its JUSTIN Mark for an extended period. The fame and extensive use of the JUSTIN Mark in the footwear industry makes any claim by Respondent that it was not aware of the JUSTIN mark at the time it registered the Disputed Domain Name implausible.

Respondent’s awareness of Complainant and its exclusive rights to use the JUSTIN Mark is further demonstrated by the fact that Respondent uses the website located at the Disputed Domain Name to publish information about cowboy boots—the very product that Complainant is best known for designing, manufacturing and distributing. It is implausible that this is merely a coincidence.

Furthermore, Respondent actually references Complainant’s products and posts “click through” advertisements for Complainant’s products and the footwear products of Complainant’s competitors on the website located at the Disputed Domain Name. Clearly, Respondent was aware of the Complainant, the nature of Complainant’s business, and Complainant’s rights in and to the JUSTIN Mark at the time it registered the Disputed Domain Name. Despite its prior knowledge of Complainant’s rights, Respondent failed to request Complainant’s permission to use the JUSTIN Mark in the Disputed Domain Name. Respondent’s unauthorized registration and use of the Disputed Domain Name with actual knowledge of Complainant’s rights in the JUSTIN Mark constitutes bad faith.

Respondent’s registration and use of the Disputed Domain Name violates Section 4 of the concerned registrar’s Registration Agreement whereby Respondent acknowledged and agreed that he would not use the concerned registrar’s services and products (e.g., domain names) in a manner that infringes on the intellectual property rights of any other person or entity. As conclusively established above, Complainant has the sole and exclusive right to use the JUSTIN Mark in connection with footwear and the sale and promotion of same. Complainant established its rights well before Respondent registered the Disputed Domain Name. Respondent was well aware of Complainant’s rights prior to registering the Disputed Domain Name as evidenced by the fact that Respondent advertises Complainant’s footwear products and products of Complainant’s competitors through the website located at the Disputed Domain Name. Nevertheless, Respondent misappropriated the JUSTIN Mark for use in the Disputed Domain Name. By doing so, Respondent has infringed upon Complainant’s rights to the JUSTIN Mark and is in breach of a material provision in the concerned registrar’s Registration Agreement.

The facts presented in this Complaint also demonstrate that Respondent uses the Disputed Domain Name in bad faith by intentionally redirecting consumers from Complainant’s website to Respondent’s own website for its own private commercial gain. Complainant submits that Respondent set out to accomplish this goal by creating a likelihood of confusion with Complainant’s JUSTIN Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This conclusion can be drawn from the fact that Respondent wholly incorporated Complainant’s JUSTIN Mark into the Disputed Domain Name and failed to identify himself or the fact that he does not have a relationship with the Complainant on the website located at the Disputed Domain Name. Respondent uses the website located at the Disputed Domain Name for commercial gain. More specifically, Respondent provides “click through” advertising hyperlinks to third-party websites where Complainant’s footwear products and the footwear products of Complainant’s competitors are sold. Respondent likely receives a referral fee in exchange for diverting consumers from Complainant’s website to the third-party websites located at the “click through” advertisements embedded throughout Respondent’s website. Prior panel decisions have consistently held that the registration of domain names for the operation of “click through” websites constitutes evidence of bad faith.

A.4 Remedies Requested

The Complainant requests the Panel issue a decision that the Disputed Domain Name be transferred to the Complainant, Justin Brands, Inc.

B. Respondent

The Respondent did not make any response or reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate.”

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The Disputed Domain Name is <justinbootswholesale.com>.

The Complainant has demonstrated substantial and extensive registered trademark rights in JUSTIN, particularly for boots, and a justifiable claim to have established significant common law rights as well, for example, through longstanding use of its website using the domain name <justinboots.com>.

The Respondent’s addition of the descriptive terms “bootswholesale” to the distinctive “justin” element in the Disputed Domain Name cannot serve to sufficiently distinguish the Domain Name from the Complainant’s trademark. Merely appending the non-distinctive terms “boots”, which is directly descriptive of the Complainants goods sold under the JUSTIN mark, and “wholesale”, which implies only that goods are intended for sale to traders rather than to consumers, cannot avoid the likelihood of confusion.

The generic top-level domain suffix “.com” is not pertinent to consideration of confusing similarity.

The Panel therefore concludes that the Disputed Domain Name is indeed confusingly similar to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has made no express claims to any relevant prior rights of its own, nor has the Complainant been able to identify anyrights in JUSTIN marks, which might have been held by the Respondent, despite the Complainant making extensive searches itself.

As the Complainant has stated, clearly, the Respondent is not known by the Disputed Domain Name, nor does the Respondent claim to have made any legitimate use of the Domain Name.

The evidence in the Complaint points inevitably to the conclusion that, as Complainant has argued, the Respondent has knowingly adopted the Disputed Domain Name to take advantage of the reputation and goodwill in Complainant’s JUSTIN Mark and products - specifically by establishing a website for selling or click-through linking to other sellers of boots under the JUSTIN Mark and under competitors’ brands. The Respondent is thereby passing themselves off as being associated with or authorised by, the Complainant. The Respondent’s website even included a spoof copyright notice “2008 © Justin Boots”.

It is commonly accepted under the Policy that such deceptive activity cannot be considered as a bona fide offering or use. It is demonstrably an illegitimate use, expressly for commercial gain, intended to mislead and divert consumers and tarnish the Complainant’s name and mark, and is entirely contrary to the legitimate examples above from paragraphs 4(c)(i) and (iii) of the Policy.

Consequently, the Panel agrees with Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the following are pertinent examples of the sort of conduct which the Panel may take (without limitation) as evidence of registration and use in bad faith:

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Complainant’s evidence, which has not been rebutted or challenged by the Respondent, establishes to the Panel’s satisfaction that the Respondent has registered and used the Disputed Domain Name for the purpose of operating a website using the JUSTIN Mark to attract users, for commercial gain, indirectly through pay-per-click connections and/or directly through links to sellers of boots, including competitors of the Complainant. The evidence shows that the website associated with the Disputed Domain Name was intended to create a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website business. Inevitably, such misuse will cause disruption and damage to Complainant’s business and reputation in the JUSTIN Mark.

The example of paragraph 4(b)(iv) of the Policy is therefore directly applicable to the present dispute.

Accordingly, for the purposes of the Policy, the Panel determines that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

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 <justinbootswholesale.com> be transferred to Complainant, Justin Brands, Inc.

Keith Gyme
Sole Panelist
Dated: December 28, 2011