IW Apparel, LLC, Workwear Outfitters, LLC and Imagewear Apparel, LLC v; Tanya Robinson

WIPO Case No. D2024-4590

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

IW Apparel, LLC, Workwear Outfitters, LLC and Imagewear Apparel, LLC v.
Tanya Robinson

Case No. D2024-4590

1. The Parties

Complainants are IW Apparel, LLC, Workwear Outfitters, LLC, and Imagewear Apparel, LLC, United States of America (“United States”), represented by Holland & Knight LLP, United States.

Respondent is Tanya Robinson, United States.

2. The Domain Name and Registrar

The disputed domain name <workauthorityonline.shop> (the “Domain Name”) is registered with Web

Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint1 was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7,
2024. On November 8, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On November 9, 2024, the Registrar transmitted by email
to the Center its verification response disclosing registrant and contact information for the Domain Name
which differed from the named Respondent (Respondent Information Hidden By Privacy Service) and
contact information in the Complaint. The Center sent an email communication to Complainants on
November 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting
Complainant to submit an amendment to the Complaint. Complainants filed an amended Complaint on

November 25, 2024.

The Center verified that the Complaint together with the amended 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”).

1 The Complaint was originally filed regarding the Domain Name, and another domain name which was removed by Complainants when

submitting the amended Complaint on November 25, 2024.

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on December 30, 2024.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 6, 2025. 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

Since 2006, Complainants, or their predecessors-in-interest, have operated a retail business under the
WORK AUTHORITY service mark, providing products such as footwear, clothing, and personal protective
equipment. These products are available in Complainants’ Canadian physical retail store, through
Complainants’ mail order catalog services, and through Complainants’ electronic, online sale services.
These products include products marketed under Complainants’ other brands such as “Kodiak”, “Terra”,
“Red Kap”, “Liberty”, and “Walls”. Complainants’ online shop is located at “ which
was registered and has been in use in commerce as early as February 13, 2006.

Complainants also own Canadian trademark registration number TMA789436 for the WORK AUTHORITY word mark, registered on February 2, 2011.

The Domain Name was registered on September 13, 2024, and resolved to a website that prominently featured the banner “WORKAUTHORITYONLINE”, and purportedly offered products that are similar to those available on Complainants’ online retail store website, including brands offered on Complainant’s “Work Authority” online retail website.

5. Parties’ Contentions

A. Complainants

Complainants contend that they have satisfied each of the elements required under the Policy for a transfer
of the Domain Name. Complainants contend that (i) the Domain Name is confusingly similar to
Complainants’ trademark; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii)

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

In particular, Complainants contend that they have trademark registrations and rights for the WORK
AUTHORITY marks that Respondent registered and is using the Domain Name with the intention to confuse
Internet users looking for bona fide and well-known WORK AUTHORITY products and services.

Complainants note that they have no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainants’ trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainants contend that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainants’ rights.

B. Respondent

Respondent did not reply to Complainants’ contentions.

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainants must satisfy the Panel that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainants have rights;

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and are being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an
admission that the complainant’s claims are true.

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence.

A. Identical or Confusingly Similar

Complainants have submitted evidence attesting to their ownership of the WORK AUTHORITY trademark,
as noted above in Section 4. Complainants have therefore proven that it has the requisite rights in the
WORK AUTHORITY trademark. Complainants have also submitted evidence which supports that the
WORK AUTHORITY trademark is widely known and a distinctive identifier of Complainants’ products and
services. Moreover, the record shows that Complainants have offered products online under the WORK

AUTHORITY mark as early as 2006.

With Complainants’ rights in the WORK AUTHORITY trademark established, the remaining question under
the first element of the Policy is whether the Domain Name, typically disregarding the Top- Level Domain
(“TLD”) in which it was registered (in this case, “.shop”), is identical or confusingly similar to Complainants’
trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case

No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainants’ WORK AUTHORITY trademark. The WORK
AUTHORITY trademark is recognizable in the Domain Name.

In particular, the Domain Name’s inclusion of Complainants’ trademark WORK AUTHORITY in its entirety, with an addition of the term “online” does not prevent a finding of confusing similarity between the Domain Name and the WORK AUTHORITY trademark. See section 1.8 of the WIPO Overview 3.0.

Thus, the Panel finds that Complainants have satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainants and their licensed to use the WORK AUTHORITY trademark or to seek registration of any domain name incorporating
WORK AUTHORITY trademark, and does not have any rights or legitimate interests in the Domain Name.

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this trademark. Respondent is also not known to be associated with the WORK AUTHORITY trademarks
and there is no evidence showing that Respondent has been commonly known by the Domain Name.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the Domain Name resolved to a website that prominently featured the banner “WORKAUTHORITYONLINE,” and purportedly offered products that are similar to those available on Complainants’ online retail store website, including brands offered on Complainant’s “Work Authority” online retail website.

In particular, this website prominently displayed the WORK AUTHORITY trademark along with the term branded products, without any accurate and prominent disclaiming statement as to the lack of relationship with Complainants.

“online”, and purportedly offered “Kodiak”, “Red Kap” and “Terra” footwear and clothing at a reduced price.

Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair
use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the
Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO
Case No. D2013-0875.

Accordingly, Complainants have provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainants have met their burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

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

The Panel finds that Complainants have provided ample evidence to show that registration and use of the WORK AUTHORITY trademark long predates the registration of the Domain Name. Complainants are also well established and known. Indeed, the record shows that Complainants’ WORK AUTHORITY trademark and related products and services are widely known and recognized. Therefore, and also noting the

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competing use to which the Domain Name was put, Respondent was aware of the WORK AUTHORITY
trademarks when it registered the Domain Name. See section 3.2.2 of the WIPO Overview 3.0; see also

TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Moreover, the Domain Names’ inclusion of Complainants’ trademark WORK AUTHORITY in its entirety, with
an addition of the “online” as noted above, in relation to the products and services associated with
Complainants’ trademarks, reflects the potentially heightened confusion caused to Internet users when such
customers are looking for Complainants’ legitimate products and services. The Panel therefore finds that
Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests bad faith.
See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo
of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,
WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case

No. D2006-0007.

Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the Domain Name
resolved to a website that prominently featured the banner “WORKAUTHORITYONLINE” and purportedly
offered products that are similar to those available on Complainants’ online retail store website, including
brands offered on Complainant’s “Work Authority” online retail website. In particular, this website
prominently displayed the WORK AUTHORITY trademark along with the term “online”, and offered

Complainant’s branded “Kodiak”, “Red Kap” and “Terra” footwear and clothing at a reduced price.

Such use of the Domain Name is also disruptive to Complainants’ business and potentially damaging to
Complainants’ reputation and goodwill, particularly because their use is in the same business and industry as
Complainants, for activities for which Complainants’ trademarks are well known, and is evidence of bad faith.
See Lennar Pacific Properties Management, Inc., Lennar Corporation v. Registration Private, Domains By
Proxy, LLC / IAutomation Contractors, WIPO Case No. D2022-1768.

Further, the Panel also notes the failure of Respondent to submit a response, or to provide any evidence of actual or contemplated good-faith use.

Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and

Complainants succeed under the third element of paragraph 4(a) of the Policy

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 Domain Name <workauthorityonline.shop> be transferred to Complainants.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: January 17, 2025