Bodenbelgium.com + 14 more domains

The timeline behind bodenbelgium.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBI TRATI O N AND MEDI ATI ON CENTER ADMINISTRATIVE PANEL DECISION J. P. Boden & Co Ltd v. Rosie Barnett, Jack Brown, Edward Briggs, Skye Newman, Mason Daly, Rebecca Rhodes, Rosie James, Caitlin Howe, Kayleigh Metcalfe, Amelia Andrews, Max Campbell, Leo Bruce, Paige Kerr, Jonathan Nixon, Kyle Akhtar Case No. D2025-1385 1. The Parties The Complainant is J. P. Boden & Co Ltd, United Kingdom, internally represented. The Respondents are Rosie Barnett, Jack Brown, Edward Briggs, Skye Newman, Mason Daly, Rebecca Rhodes, Rosie James, Caitlin Howe, Kayleigh Metcalfe, Amelia Andrews, Max Campbell, Leo Bruce, Paige Kerr, Jonathan Nixon, Portugal, and Kyle Akhtar, Germany. According to the Registrar’s verifications, the abovementioned names are the registrants’ names for the disputed domain names as follows: Domain Name Registrant’s name <bodencanada.com> Rosie Barnett <bodenbelgium.com> Skye Newman <bodenchile.com> Mason Daly <bodencolombia.com> Caitlin Howe <bodengreece.com> Edward Briggs <bodenhrvatska.com> Kayleigh Metcalfe <bodensuisse.com> Leo Bruce <bodenjapan.com> Jonathan Nixon <bodenlietuva.com> Rosie James <bodennederland.com> Rebecca Rhodes <bodennorge.com> Jack Brown <bodenportugal.com> Amelia Andrews <bodenromania.com> Max Campbell <bodensouthafrica.com> Paige Kerr <bodenisrael.com> Kyle Akhtar In this Decision, unless reference is made to any of them separately, all the above registrants are collectively referred as “the Respondent”. page 2 2. The Domain Names and Registrar The disputed domain names <bodencanada.com>, <bodenbelgium.com>, <bodenchile.com>, <bodencolombia.com>, <bodengreece.com>, <bodenhrvatska.com>, <bodensuisse.com>, <bodenjapan.com>, <bodenlietuva.com>, <bodennederland.com>, <bodennorge.com>, <bodenportugal.com>, <bodenromania.com>, <bodensouthafrica.com>, and <bodenisrael.com>, are registered with Paknic (Private) Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2025. On April 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 10, 2025, 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 (Paknic (Private) Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2025 with the registrant and contact information of nominally multiple underlying registrants disclosed by the Registrar, requesting the Complainant to either file separate complaints 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 May 1, 2025, listing only one disputed domain name <bodencanada.com>. 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2025. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 28, 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. On June 6, 2025, the Panel issued Procedural Order No. 1 inviting: (i) the Complainant, to clarify by June 11, 2025, whether it would like to proceed with a single complaint concerning only one disputed domain name (<bodencanada.com>), or to request the consolidation in a single complaint of the proceedings against all above-referred nominally different registrants; and (ii) the Respondent, to submit by June 16, 2025, its arguments or evidence regarding the Complainant’s submission in response to Procedural Order No. 1, and in reply to the original Complaint with reference to the additional 14 domain names (excluding <bodencanada.com>). On June 11, 2025, the Complainant provided its response to Procedural Order No. 1, requesting the consolidation in a single complaint of the proceedings against all nominally different registrants. The Respondent did not submit any response. page 3 4. Factual Background The Complainant is a British fashion retail company that has its origin in 1991 when its founder launched a hand-drawn catalogue featuring menswear-clothing styles. It commercializes its clothing under the BODEN mark internationally through various online platforms (such as Amazon, Zalando, Next), and its official websites at “www.boden.com” and “www.bodenusa.com”, among others. The Panel under its general powers has consulted the Complainant’s official websites and has conducted a search over the Internet for the BODEN brand. The Complainant owns various trademark registrations for its brand, including: - Australia Trademark Registration No. 1556866, BODEN, registered on May 14, 2013, in classes 25, and 35; - Canada Trademark Registration No. TMA1050885, BODEN, registered on August 23, 2019, in classes 3, 8, 9, 9, 14, 14, 16, 18, 18, 20, 20, 21, 25, 25, 26, 34, 35, and 35; - European Union Trade Mark Registration No. 008153413, BODEN, registered on February 22, 2010, in classes 9, 14, 18, 20, 25, and 35; - United States Trademark Registration No. 2463229, BODEN, registered on June 26, 2001, in class 25. (Hereinafter collectively referred as the “BODEN mark”). The Complainant further owns various domain names corresponding to its brand, including <boden.com> (registered on February 2, 1996), and <bodenusa.com> (registered on February 9, 2004), which resolve to its official websites and online stores. All the disputed domain names were registered on June 26, 2023, except <bodenisrael.com> that was registered on October 16, 2023. The disputed domain name <bodencanada.com> is currently inactive resolving to an Internet browser error message, albeit, according to the evidence provided by the Complainant, it previously resolved to a website, in English language, that purportedly commercialized clothing and accessories bearing the BODEN mark. This website prominently included the BODEN mark at its heading and within its content and reproduced the design, color combination and copyrighted images included in the Complainant’s official websites. This website did not include any reference to its owner or that of the disputed domain name <bodencanada.com>, and it was silent over its lack of relationship with the Complainant and its trademark. Likewise, the remaining 14 disputed domain names resolve to identical or very similar websites, in the respective language corresponding to the geographical terms included in these disputed domain names and purportedly commercialize clothing and accessories bearing the BODEN mark. These websites include a capital letter “B” in green color as their favicon and prominently include the BODEN mark at their headings and within their content. These websites reproduce the design, color combination and copyrighted images included in the Complainant’s official websites, and do not provide any information about their owner or that of the disputed domain names, nor do they indicate anything about their lack of relationship with the Complainant and its trademark. On April 3, 2024, and March 17, 2025, the Complainant sent cease and desist communications to the Registrar requesting the suspension of the Respondent’s websites and the transfer of the disputed domain names. The Registrar did not comply with these requests. page 4 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends the disputed domain names are confusingly similar to its trademark and the domain names of its official websites, as they incorporate the BODEN mark and geographical terms (Canada, Belgium, Greece, etc.), following the same naming pattern used by the Complainant for its official websites’ domain names (e.g., “www.bodenusa.com”). The disputed domain names create the impression of being the Complainant’s official websites for the different countries included in the disputed domain names. The Complainant further contends the Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain names infringe the BODEN mark and they are used to resolve to copycat versions of the Complainant’s of f ic ial websites. The Respondent’s websites impersonate the Complainant and prominently include the BODEN mark as well as copyright-protected images of its models and products to deceive Internet users. The Complainant has received several complaints from users requesting information on the status of their deliveries and requesting returns for unfulfilled orders placed on the Respondent’s websites. These customers have complained they submitted their personal data including credit card details through the Respondent’s websites. The Complainant finally contends the disputed domain names were registered and are being used in bad faith. The Respondent is intentionally attracting for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark and its products. The disputed domain names were intentionally registered in bad faith and they have been used to deceive the public for fraudulent gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed materials and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Preliminary issue: Consolidation against Multiple Respondents In response to Procedural Order No. 1, the Complainant requested the consolidation in a single complaint of the proceedings against all nominally different registrants of the disputed domain names. The Respondent did not submit any response to this request. Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names and/or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. page 5 As regards common control, the Panel notes that the circumstances of this case show a similar pattern in the disputed domain names that leads to consider they are under a common control. Particularly, the Panel notes (i) all the disputed domain names were registered on the same date or closely in time (14 of the disputed domain names were registered on June 26, 2023, and <bodenisrael.com> was registered on October 16, 2023); (ii) all the disputed domain names were registered with the same Registrar; (iii) all of them follow a similar composition, incorporating the BODEN mark followed by a geographical term; (iv) they were registered by nominally different individuals, but providing similar contact details (e.g., all but one located in Lisbon, Portugal, and all of them following a similar structure for the email addresses); and (v) they are (or were in the case of <bodencanada.com>) all used in connection to similar or identical websites that purportedly commercialize the Complainant’s products and use the same contact email address. As regards fairness and equity, the Panel sees no reason why consolidation of the disputed domain names in a single proceeding would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (collectively referred to as “the Respondent”) in a single proceeding. B. 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 names. 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, namely the BODEN mark. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain names followed by geographical terms. The Panel finds the mark is recognizable 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, “Canada”, “Belgium”, “Chile”, “Colombia”, “Greece”, “Hrvatska” (“Croatia” in Croatian), “Suisse” (“Switzerland” in French), “Japan”, “Lietuva” (“Lithuania” in Lithuanian), “Nederland” (“Netherlands” in Dutch), “Norge” (“Norway” in Norwegian), “Portugal”, “Romania”, “South Africa”, and “Israel”, 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 names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Therefore, the Panel finds the first element of the Policy has been established. C. 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. page 6 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 finds nothing in the record indicating the Respondent may have rights or legitimate interests in the disputed domain names. The Panel notes the term “Boden” either alone or in combination with the geographical terms included in the disputed domain names does not share any similarities with the registrants’ names revealed by the Registrar’s verifications. The Panel has further corroborated through various searches over the Global Brands Database using the registrant’s names, that the Respondent does not appear to own any registered trademark consisting of or including the term “Boden” alone or in combination with any of the geographical terms included in the disputed domain names. 1 While the Panel is aware that the term “Boden” may be a surname and it is a German word that could be translated as “floor”, “soil”, “ground” or similar meanings, the Panel does not consider this fact by itself automatically confer rights or legitimate interests on the Respondent. Panels have recognized that in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights, which is not the case here. WIPO Overview 3.0, section 2.10. Additionally, regarding the current use of the disputed domain names (or previous use in the case of <bodencanada.com>), the Panel finds it cannot be considered a bona fide offering of goods or services under the Policy. Panels have held a nominative fair use by resellers or distributors of a domain name containing the relevant mark may be considered a bona fide offering of goods or services and may be legitimate under certain circumstances outlined in the “Oki Data test” (in reference to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). These circumstances are not present here, as the Respondent’s websites do not accurately and prominently disclose the lack of relationship with the Complainant, but, on the contrary, generate confusion and false affiliation with the Complainant and its trademark, and the Panel finds the Respondent has tried to “corner the market” with 15 disputed domain names that reflect the BODEN mark. WIPO Overview 3.0, section 2.8. The Panel has confirmed that, according to the Complainant’s allegations, the Respondent’s websites have a similar layout as the Complainant’s official websites (“www.boden.com” and “www.bodenusa.com”), using a very similar design, color combination, and including copyrighted images of the Complainant’s products. T he Respondent’s websites purportedly commercialize the Complainant’s BODEN products, prominently display the BODEN mark, with the same graphic representation used by the Complainant in its official websites (written in green capital letters) at their headings and within their content and use as favicon a capital letter “B” in green color identical to the one included in the Complainant’s official websites. The Panel further notes the Respondent’s websites do not include any information about their owner or that of the disputed domain names and do not indicate anything about their lack of relationship with the Complainant and its trademark. 1 Noting in particular the general powers of a panel, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. WIPO Overview 3.0, section 4.8. page 7 Therefore, the Panel finds the Respondent’s websites constitute an attempt to impersonate or pass off as the Complainant, which cannot be considered a bona fide offering of goods or services under the Policy. In this respect, the consensus view among previous panels appointed under the Policy is that the use of a domain name for illegitimate activities, such as impersonation or passing off, can never confer rights or legitimate interests in a domain name on a respondent. WIPO Overview 3.0, section 2.13.1. Additionally, the Panel finds the disputed domain names encompass an implied risk of affiliation with the Complainant and its BODEN mark that makes it difficult to conceive any rights or legitimate interests in the Respondent. The composition of the disputed domain names incorporating the BODEN mark with the addition of geographical terms (“Canada”, “Belgium”, “Chile”, “Colombia”, “Israel”, etc.), following the same naming policy of the Complainant’s domain names for its official websites (e.g., <bodenusa.com>), generates an implied affiliation or confusion, and suggests the disputed domain names are owned or sponsored by the Complainant. Internet users would see the disputed domain names and the Respondent’s websites as the Complainant’s official websites for the named corresponding countries or territories. WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds the second element of the Policy has been established. D. 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 BODEN mark has been continuously used in the market for over 30 years (since 1991), and it has a strong presence over the Internet. The Panel under its general powers has conducted a search over the Internet for the BODEN mark finding numerous websites and online shopping platforms that commercialize the Complainant’s products. The Panel further finds both the registration and the use of the disputed domain names indicate the Respondent knew about the Complainant, its BODEN mark, and its products, and targeted them in bad faith. The Composition of the disputed domain names, all including the BODEN mark followed by a geographical term, with the same naming pattern followed by the Complainant for its domain names, and the use of the disputed domain names, to resolve to websites that impersonate the Complainant and reproduce its official websites, indicate a targeting intention to defraud the public for a commercial gain. The Respondent’s use of the disputed domain names not only indicate full knowledge of the BODEN mark but also an attempt of misleadingly diverting consumers for its own commercial gain. In other words, the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant and its trademark, which is a circumstance of registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Furthermore, panels have held that the use of a domain name for illegitimate or illegal activity here, claimed impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Therefore, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitute bad faith under the Policy. Regarding the current apparent non-use of the disputed domain name <bodencanada.com>, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and notoriety of the BODEN mark (acquired through its continuous and extensive use in the market), as well as the composition of the disputed domain names, and finds in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. page 8 The Panel further finds the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name, which constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy, as the Respondent registered (on separate occasions) up to 15 trademark- abusive domain names incorporating the BODEN mark. WIPO Overview 3.0, section 3.1.2. Other factors corroborate a finding of bad faith, such as the choice to use a privacy protection service, and the use of various different individuals’ names for the registration of the disputed domain names, as well as the Respondent’s lack of reply to the Complaint or to the Procedural Order No. 1, failing thereby to refute the Complainant’s allegations of bad faith. Accordingly, 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 <bodencanada.com>, <bodenbelgium.com>, <bodenchile.com>, <bodencolombia.com>, <bodengreece.com>, <bodenhrvatska.com>, <bodensuisse.com>, <bodenjapan.com>, <bodenlietuva.com>, <bodennederland.com>, <bodennorge.com>, <bodenportugal.com>, <bodenromania.com>, <bodensouthafrica.com>, and <bodenisrael.com> be transferred to the Complainant. /Reyes Campello Estebaranz/ Reyes Campello Estebaranz Sole Panelist Date: June 17, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.