WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TBL Licensing LLC v. See PrivacyGuardian.org / Kevin Ebersbach

Case No. D2019-2172

1. The Parties

The Complainant is TBL Licensing LLC, United States of America (“United States”), represented by SILKA Law AB, Sweden.

The Respondent is See PrivacyGuardian.org, United States / Kevin Ebersbach, Germany.

2. The Domain Name and Registrar

The disputed domain name <timberlandtenis.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 6, 2019, 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 September 11, 2019 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 September 12, 2019.

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 September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 16, 2019. 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.

4. Factual Background

The Complainant indicates that its brand TIMBERLAND has been in the market for 40 years and has gained a reputation in connection with outdoor gear. The Complainant asserts this brand is sold in Asia, Europe, Latin America, the Middle East, Canada and the United States.

The Complainant alleges to own trademark rights over TIMBERLAND since the year 1984.

The Complainant provided evidence accounting for numerous trademark registrations, among them, the following:

- TIMBERLAND trademark registration No. 1300704 before the United States Patent and Trademark Office in class 39, granted on October 16, 1984;

- TIMBERLAND trademark registration No. 1588288 before the United States Patent and Trademark Office in class 100, 101, granted on March 20, 1990;

- TIMBERLAND trademark registration No. 000164525 before the European Union Trademark Office in classes 18 and 25, granted on June 22, 1998.

The Complainant has trademarks rights over TIMBERLAND & design registered, among others, in the United States:

- TIMBERLAND & design trademark registration No. 1355531 before the United States Patent and Trademark Office in classes 39, granted on August 20, 1985;

- TIMBERLAND & design trademark registration No. 1592927 before the United States Patent and Trademark Office in classes 14 and 27 on April 24, 1990.

The Complainant provided evidence accounting for the ownership of the domain names:

- <timberland.com> registered on April 24, 1995;

- <timberland.eu> registered on June 2, 2006.

The Disputed Domain Name <timberlandtenis.com> was registered on January 10, 2019. The Disputed Domain Name is being used for the sale of footwear for children, women and men, and men’s apparel.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks TIMBERLAND. The Disputed Domain Name incorporates the Complainant’s trademark with the addition of the Portuguese word “tenis” and the genetic Top-Level Domain (“gTLD”) “.com”.

The Complainant indicates that prima facie the Respondent has no legitimate rights over a Disputed Domain Name which incorporates the Complainant’s trademark.

The Complainant asserts that the intention of the Disputed Domain Name is to mislead consumers into believing that the web site is endorsed by the Complainant where products are offered for sale at a discounted price.

The Complainant alleges that the Respondent may presumably be offering a large quantity of counterfeit products.

The Complainant states that the Respondent makes unauthorized use of the Complainant’s trademark and infringes the Complainant’s copyright protected images.

Moreover, the Complainant mentions that at the bottom of the site there is a note reading: “Copyright © 2019 www.timberlandtenis.com. Powered by Timberland Loja Online Portugal” which the Complainant deems that it creates the impression that the Respondent has rights in the name “Timberland”.

The Complainant cites H & M Hennes & Mauritz AB v. Donnie Lewis, WIPO Case No. D2017-0580 where the respondent also sold counterfeit products and the panel held that such use of the domain name did not constitute any rights or legitimate interests.

The Complainant deems that the host’s conduct shows a pattern since it has been involved in identical websites that have been shut down.

The Complainant alleges that the letters sent to the Respondent with respect to the unlawfully registration and use of the Disputed Domain Name, the infringement of the TIMBERLAND trademark and of images protected under copyright were unfruitful.

The Complainant as well stressed the security threat that the questioned web site poses for costumers’ data and the risk of damage to the Complainant’s reputation if the costumers’ information is incorrectly used.

The Complainant states that it is the owner of a well-known trademark that predates the registration of the Disputed Domain Name and that the Respondent is not using the Disputed Domain Name for any legitimate use.

Finally, the Complainant considers that the Respondent was aware of the rights that the Complainant has in the trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for TIMBERLAND.

The Disputed Domain Name incorporates the Complainant’s trademark TIMBERLAND together with the Portuguese word “tenis” (tennis in English) and the gTLD “.com”. The latter two elements do not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See sections 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In sum, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant’s trademark TIMBERLAND. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances shall demonstrate respondent’s rights or legitimate interests:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name for several decades. The Complainant has alleged that the Disputed Domain Name does not incorporate a trademark owned by the Respondent nor is the Respondent commonly known by the name “timberland”.

The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

The Panel notes that there is nothing on the website at the Disputed Domain Name when informs the Internet user the relationship (or lack thereof) between the Respondent and the Complainant. Moreover, the Disputed Domain Name carries a risk of implied affiliation.

The Respondent has failed to show that it has acquired any trademark rights in respect of the Disputed Domain Name or that it is commonly known by the Disputed Domain Name.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the Disputed Domain Name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.

The Complainant’s trademarks predate the registration of the Disputed Domain Name for several decades and it is a well-known trademark. Therefore, the Panel concludes that the Respondent registered the Disputed domain name with knowledge of the Complainant’s well-known trademark since the content on the website is related to the Complainant products.

The Panel visited the Disputed Domain Name’s website and was able to verify that it is being used for a non authorized online store with Timberland products. Nothing on the website clarify to the user the relationship (or lack thereof) between the Respondent and the Complainant. Therefore the Panel concludes that the Respondent has intentionally attempted to attract for commercial purposes, Internet users to the questioned site by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of its website as required by paragraph 4 (b) iv of the Policy.

The Panel finds that the Complainant has satisfied the third requirement.

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 <timberlandtenis.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 30, 2019