Complainant is TBL Licensing LLC, United States of America (“United States”), represented by SILKA AB, Sweden.
Respondent is Unknown Unknown, China.
The disputed domain name <original-timberland.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 11, 2021.
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 Respondent of the Complaint, and the proceedings commenced on November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2021.
The Center appointed Yijun Tian as the sole panelist in this matter on December 21, 2021. 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.
Complainant, TBL Licensing LLC, is a company incorporated in the United States. Founded in 1973, Complainant is a world-leading company for making outdoor gear, particularly waterproof leather boots. Complainant has about 230 company-owned stores and sells its products through department and athletic shops in Asia, Canada, the European Union, Latin America, the Middle East, and the United States.
The TIMBERLAND and TIMBERLAND-related marks have been registered worldwide, including an international trademark for TIMBERLAND (e.g., registration number 509706, registered on November 10, 1986), and a Chinese trademark for TIMBERLAND (e.g., registration number 4842773, registered on April 21, 2014).
Complainant and/or its affiliates also registered domain names which contain the TIMBERLAND trademark. For example, Complainant operates an interactive website accessible at the domain name <timberland.com>, which has been registered since 1995, and a Chinese website at the domain name <timberland.com.cn>, which has been registered since 1999.
Respondent is Unknown Unknown, China.
The disputed domain name <original-timberland.com> was registered on October 9, 2019. The disputed domain name resolved to a website displaying adult content. The Panel notes that currently the website at the disputed domain name is inactive.
Complainant contends that the disputed domain name is confusingly similar to the TIMBERLAND trademark. Merely adding the generic or descriptive term “original”, and the generic Top-Level Domain (“gTLD”) suffix “.com”, to the TIMBERLAND trademark do not prevent the finding of confusing similarity.
Complainant contends that Respondent has no rights or legitimate interests in respect to the disputed domain name.
Complainant contends that Respondent has both registered and used the disputed domain name in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the TIMBERLAND marks. The disputed domain name comprises the TIMBERLAND mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the term “original-” and the gTLD suffix “.com” to the TIMBERLAND marks. This does not impact the recognizability of Complainant’s marks within the disputed domain name, nor eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). Similarly, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, in relation to the gTLD suffix, WIPO Overview 3.0, section 1.11, further states: “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 disregarded under the first element confusing similarity test.”
The Panel therefore holds that Complainant fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks or services at issue.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein)
The TIMBERLAND marks have been registered internationally since 1986 and registered in China since 2014, which long precede Respondent’s registration of the disputed domain name (in 2019). According to the Complaint, Complainant is one of the world-leading companies producing outdoor gear, particularly waterproof leather boots. Complainant has about 230 company-owned stores and sells its products through department and athletic shops in Asia, Canada, the European Union, Latin America, the Middle East, and the United States.
Moreover, Respondent is not an authorized dealer of TIMBERLAND-branded products or services nor authorized to use the Complainant’s mark in a domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the term
“original-timberland” in the disputed domain name and in its business operation. The construction of the disputed domain name carries a risk of implied affiliation, contrary to the fact, misleading users as to the Complainant’s endorsement or affiliation to the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the TIMBERLAND marks or to apply for or use any domain name incorporating the TIMBERLAND marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2019, long after the TIMBERLAND marks became internationally known. The disputed domain name is confusingly similar to the TIMBERLAND marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name resolved to a website displaying adult contents, and is not currently associated with an active website. It seems that Respondent used to make profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203)
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that Complainant fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
(a) Registration in Bad Faith
The Panel finds that the TIMBERLAND marks have a widespread reputation in the outdoor gear industry. As mentioned above, TIMBERLAND marks are registered internationally (since 1986) and registered in China (since 2014). Complainant operates more than 230 stores in Asia, Canada, the European Union, Latin America, the Middle East, and the United States, including China.1 It is not conceivable that Respondent would not have had actual notice of the TIMBERLAND marks at the time of the registration of the disputed domain name (in 2019). The Panel, therefore, finds that the TIMBERLAND mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). The Panel’s finding is reinforced given the coupling of the term “original” with the Complainant’s mark, illustrating Respondent’s intent to convey to unsuspecting Internet users that such a domain name would resolve to a website affiliated to the Complainant and offering “original” products therefrom, despite resolving to a site offering adult content, which may cause harm to the Complainant’s mark and reputation.
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to UDRP previous panel decisions “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, and also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(b) Use in Bad Faith
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location”. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
As noted above, the disputed domain name has been used to attract Internet users seeking Complainant’s websites displaying adult contents, presumably for the commercial gain of Respondent. Such conduct falls squarely within the language of paragraph 4(b)(iv) of the Policy.
Further, given the lack of response and use of false contact details, the Panel cannot envision any other plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the Panel concludes that current inactive use of the disputed domain name by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that Complainant fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <original-timberland.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: January 15, 2022
1 See “https://www.timberland.com.cn/” and “https://www.timberland.cn/”.