Tennman Brands, LLC v Name Redacted, AlyssaBrooks AlyssaBrooks

WIPO Case No. D2024-3002

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tennman Brands, LLC v. Name Redacted, AlyssaBrooks AlyssaBrooks,
AlyssaBrooks, and JenniferJones JenniferJones, JenniferJones

Case No. D2024-3002

1. The Parties

The Complainant is Tennman Brands, LLC, United States of America (“United States”), represented by

Maynard Nexsen PC, United States.

The Respondents are Name Redacted[1], AlyssaBrooks AlyssaBrooks, AlyssaBrooks, United States, and

JenniferJones JenniferJones, JenniferJones, United States.

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Names and Registrar

The disputed domain names <justintimberlakeonline.com>, <justintimberlakesstore.com>,

<shopjustintimberlake.com> are registered with CNOBIN Information Technology Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2024. On connection with the disputed domain name. On July 25, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (None given) and contact information in the Complaint.

The Center sent an email communication to the Complainant on July 29, 2024 with the registrants and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 5, 2024.

page 2

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on August 16, 2024. In accordance with the Rules, paragraph

5, the due date for Response was September 5, 2024.

On August 23, 2024, the Center received communication from a third-party email address claiming to have
received the Written Notice to their address with their name. The third party claimed to have no affiliation
with any of the three disputed domain names that were included in the Written Notice and also added that
the email appeared to be a fake Gmail account. The Center acknowledged this communication on August
29, 2024, and also informed the other Parties of the said communication on August 29, 2024. On September
5, 2024, the third party sent another email to the Center. The Center acknowledged that communication on

September 12, 2024.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 17, 2024. 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 is a Delaware corporation that manages trademarks for American singer and actor Justin Timberlake. It is the proprietor of several trademarks for the JUSTIN TIMBERLAKE mark, including United

States Trademark No. 3228297 for JUSTIN TIMBERLAKE (word mark), registered on April 10, 2007 for

services in class 41, claiming a date of first use in May 2003.

All three disputed domain names were registered on May 21, 2024. At the time of the Complaint, all three resolved to websites purporting to offer apparel, some of it displaying the JUSTIN TIMBERLAKE mark, apparel for sale. At the time of the Decision, only the website at <shopjustintimberlake.com> remained active.

No information is available about the Respondents.

5. Parties’ Contentions

A. Complainant

1. Request to consolidate proceedings

The Complainant requests consolidation of the proceedings for the following reasons: the e-mail address for each Respondent is the same. The phone number for the first named Respondent lacks the appropriate number of digits. All three are being used to provide an online retail store offering for sale apparel, some

bearing the JUSTIN TIMBERLAKE mark. The Complainant believes that all are under common control.

2. Substantive contentions

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

page 3

Notably, the Complainant contends that it has made continuous and exclusive use of the JUSTIN

TIMBERLAKE mark for over 22 years. The disputed domain names reflect this mark, and the Respondent

uses them to offer online retail store services under the JUSTIN TIMBERLAKE mark featuring apparel, some

of which displays this mark. The Respondent is not known by the disputed domain names and its only pass itself off as the Complainant.

purpose is to mislead consumers that the Respondent’s services and apparel are associated with the

B. Respondents

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

6. Discussion and Findings

6.1 Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names reflect similar naming patterns,

consisting of the Complainant’s JUSTIN TIMBERLAKE mark preceded or followed by terms related to

“online” and/or “shopping”. The disputed domain names resolved to websites offering apparel, some of it
bearing the Complainant’s JUSTIN TIMBERLAKE mark. The registrations were effected on the same date,
using the same Registrar.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2 Substantive issues

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

(i)        the disputed domain names are 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 disputed domain names; and

(iii)      the Respondent has registered and is using the disputed domain names in bad faith.

page 4

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the JUSTIN TIMBERLAKE mark is reproduced within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “shop,” “online,” and “store”) may bear on assessment of the
second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel notes that the composition of the disputed domain names, which reflects the Complainant’s

JUSTIN TIMBERLAKE trademark together with the terms “shop,” “online” and “store,” carry a risk of implied

affiliation to the Complainant that cannot constitute fair use. WIPO Overview 3.0, section 2.5.1.

The Panel further finds that there is no evidence available that would support a finding that the disputed domain names are being used for legitimate purposes and not as a pretext for commercial activity. The Panel notes that there is no information for Internet users visiting the Respondent’s websites that they are

not operated by the Complainant. . In this case, the Panel finds that the disputed domain names are being
used to sell gym wear products purporting to be affiliated with the Complainant and directing users to the
Respondent’s e-commerce websites.

page 5

Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation/passing off,) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial
gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark

(paragraph 4(b)(iv) of the Policy). The disputed domain names were registered more than 15 years after the

Complainant registered its JUSTIN TIMBERLAKE trademark. They reflect the Complainant’s mark in its

entirety plus terms referring to online retail services, therefore implying a connection to the Complainant. Under these circumstances, the Panel finds that the disputed domain names were registered in bad faith. WIPO Overview 3.0, section 3.1.4.

The use of the disputed domain names to direct to the Respondent’s e-commerce websites is further evidence of bad faith. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, nor does the Panel find any such use plausible.

Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation/passing off,) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 disputed domain names <justintimberlakeonline.com>, <justintimberlakesstore.com> and

<shopjustintimberlake.com> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa /

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: October 1, 2024

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.