The Complainant is Honeywell Safety Products USA, Inc., United States of America (“United States” or “U.S.”), represented by Fross Zelnick Lehrman & Zissu, P.C., United States.
The Respondent is Dongo Shin, DH, United States.
The disputed domain name <muckboots.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 2, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2020.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 10, 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.
Since 1999, Complainant and its predecessors have used its marks on a wide range of boots and footwear for adults and children, men and women. Complainant’s official website for its footwear is at “www.muckbootcompany.com”, which Complainant registered in 2001. There currently are in excess of 3,000 locations (both brick and mortar and on-line) that sell Complainant’s products in the U.S. Complainant’s products are sold in or shipped to consumers in all 50 states, with sales exceeding USD 100 million dollars alone over the past five years.
Complainant owns multiple trademark registrations in the United States and various jurisdictions around the world for its MUCK and THE ORIGINAL MUCK BOOT COMPANY trademarks, including U.S. Trademark Registration No. 2,284,071 for MUCK, registered on October 5, 1999, U.S. Trademark Registration No. 2,284,072 for THE ORIGINAL MUCK BOOT COMPANY & Design, also registered on October 5, 1999, and Japanese Registration No. 5869460 for MUCK BOOT, registered on July 29, 2016.
The Disputed Domain Name originally registered in July of 2002 appears to have been transferred to the current Respondent as of August 24, 2020. The Disputed Domain Name presently redirects to “https://www.bestboots.org/best-work-boots-for-farming/” with links to Complainant’s products as well as third-party sites that sell goods that compete with Complainant’s products.
Complainant asserts that it has established extensive and strong common law rights in the mark MUCK BOOT, and that the Disputed Domain Name is confusingly similar to Complainant’s mark, merely adding an extra “s” to Complainant’s mark. Complainant owns numerous U.S. trademark registrations for MUCK and THE ORIGINAL MUCK BOOT COMPANY.
Complainant also asserts that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Complainant has not authorized, licensed or granted permission to Respondent to register, or claim ownership of the Disputed Domain Name and would never permit any third-party to own or claim rights in any assets, including domain names, that use any of the Complainant’s marks for an ad farm or to otherwise monetize the marks, which Complainant alleges is being done by Respondent here.
As to Respondent’s bad faith, Complainant contends that Respondent registered and is using the Disputed Domain as an ad farm featuring pay-per-click (“PPC”) links to Complainant’s competitor’s websites for boots, and is monetizing the recognition of the Complainant’s marks for its commercial benefit. Complainant further asserts the Respondent has shown bad faith by listing the Disputed Domain Name for sale via voodoo.com. According to Complainant, Respondent knew or should have been aware of Complainant’s mark at the time Respondent acquired the Disputed Domain Name, as the acquisition occurred after Complainant had made extensive use of its mark and after Complainant’s marks were registered in the United States and other countries around the world.
Thus, according to Complainant, Respondent acquired and is using the Disputed Domain Name in bad faith.
Respondent did not respond to the Complaint.
Complainant’s trademark registrations establish that it has rights in the MUCK and MUCK BOOT marks. In addition to Complainant’s many trademark registrations, Complainant has also submitted sufficient evidence of common law rights in the United States in the MUCK BOOT trademark, namely sales exceeding USD 100 million dollars over the past five years of products bearing the MUCK BOOT mark through various channels, including 3000 brick and mortar locations. WIPO Overview 3.0, section 1.8. The Disputed Domain Name is confusingly similar to both marks. Where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Adding an “s” to the term “boots” in Complainant’s MUCK BOOT mark does not dispel the confusing similarity. See WIPO Overview 3.0, section 1.8.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized or licensed Respondent’s use of its marks in the Disputed Domain Name.
At the time the Complaint was filed, the Disputed Domain Name redirected users to a different domain with a website featuring PPC ads for products sold by competitors. This is not a bona fide use. “[U]se of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” See WIPO Overview 2.9. When the Panel attempted to visit the Disputed Domain Name November 23, 2020, the URL redirected to <bestboots.org>, which purported to compare Complainant’s “THE ORIGINAL MUCKBOOTS” to other “farming” boots and offered links to “Buy on Amazon”. This exploitation of Complainant’s brand to attract Internet shoppers to a site where other brands are also promoted is not a legitimate bona fide use. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 2.8.1.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Respondent acquired the Disputed Domain Name fully aware of Complainant’s rights. The relevant time for assessing evidence of bad faith is August 24, 2020, when the Disputed Domain Name was transferred to Respondent. WIPO Overview 3.8.1. Respondent has not denied Complainant’s allegations that its marks were well known as of that date and that Respondent was aware of that reputation. The Panel also notes that Complainant and its predecessors have used its marks on a wide range of boots and footwear since 1999. Furthermore, Respondent currently redirects Internet traffic to <bestboots.com>, where Complainant’s boots are compared with other boot brands. In that site, the Complainant’s registered logo design is prominently displayed on images of, apparently, authentic boots and there are “Check on Amazon” links. This conduct demonstrates the obvious fact that Respondent was well aware of Complainant’s brand and concomitant trademark rights. Even though the current use did not exist when Respondent acquired the Disputed Domain Name on August 24, 2020, the Respondent quickly implemented the current use. Under these circumstances, it is fair to infer, and the Panel finds, especially in the absence of a denial, that Respondent acquired the Disputed Domain with the plan of quickly implementing the current usage.
Since Respondent acquired to Disputed Domain name, Respondent has used it in bad faith, initially to redirect Internet visitors to a pay-per-click parking page featuring links to competitors, intentionally creating a likelihood of confusion with Complainant’s trademark for Respondent’s financial gain. See Wayfair LLC v. Xiamen Privacy Protection Service Co., Ltd. / zhang qin, WIPO Case No. D2018-2032. Respondent’s current use (redirecting to a comparison site that, as the Panel finds above, does not comply with Oki Data) is also bad faith use.
Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <muckboots.com> be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Date: November 24, 2020