Complainant is Dansko, LLC of West Grove, Pennsylvania, United States of America (“U.S.”), represented by Cozen O'Connor, U.S.
Respondent is Congj Buxar of Clemmons, North Carolina, U.S.
The disputed domain name <danskoshop.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 4, 2018. 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 states that it “is a well-known American-owned footwear company, which was established in 1990” and that “[o]ne of the main components of Complainant’s business includes the sale of various types of shoes using its DANSKO mark.”
Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark DANSKO, including U.S. Reg. No. 2,496,059 for a stylized version of the mark DANSKO (registered May 6, 2003) for use in connection with footwear; and U.S. Reg. No. 2,712,957 for the word mark DANSKO (registered May 6, 2003) for use in connection with footwear. These trademarks are referred to herein as the “DANSKO Trademark.”
The Disputed Domain Name was created on August 9, 2017, and is being used in connection with a website selling footwear under the DANSKO Trademark.
Complainant sent a letter via email to Respondent on May 24, 2018, regarding the Disputed Domain Name, but Complainant states that it never received a response from Respondent.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the DANSKO Trademark because it “incorporates the entirety” of the DANSKO Trademark, and the “generic and/or descriptive term ‘shop’… does not negate the confusing similarity between the domain name and Complainant’s trademarks.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“Respondent is not affiliated with Complainant, is not an authorized reseller of Complainant's footwear, or has any lawful access to commercial quantities of authentic DANSKO®-brand footwear”; “[t]here is no evidence to suggest that Respondent has registered the DANSKOSHOP.COM domain name to advance legitimate interests or for the bona fide offering or legitimate goods or services”; “Respondent has used the DANSKOSHOP.COM domain name to create a website that seeks to misdirect potential consumers from Complainant’s legitimate website”; and “[t]he website associated with the DANSKOSHOP.COM domain looks virtually identical to Complainant’s website, including the use of Complainant's DANSKO® marks, the names and images of Complainant’s products, as well as the overall ‘look and feel’ of Complainant’s copyright protected website.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Complainant has deliberately created a website that intentionally copies off of Complainant’s website and willfully infringes on Complainant’s intellectual property including its DANSKO® trademarks” and “lures unsuspecting consumers to the website who believe that the site is somehow affiliated with Complainant and Complainant’s footwear”; “Respondent perpetuates fraud by allowing consumers to ‘buy’ DANSKO® footwear on the DANSKOSHOP.COM website, toking those consumers’ money and then never sending them the ordered product, as Respondent has no lawful access to commercial quantities of authentic DANSKO®-branded footwear”; “Complainant has received several consumer correspondences about DANSKOSHOP.COM whereby consumers have asked if the DANSKOSHOP.COM website is indeed affiliated with Complainant, and complaining that they never received the footwear they purchased from the DANSKOSHOP.COM website”; Complainant never received a response from Respondent to its demand letter; Respondent transferred the Disputed Domain Name to a different website hosting company after Complainant complained about the website, in an “attempt[] to evade enforcement”; and Respondent has lost at least two previous decisions under the Policy, also involving websites related to footwear, Na’ale Naot Agricultural Cooperative Society for Business Ltd. / Yaleet, Inc. v. Congj Buxar, WIPO Case No. D2017-2558 (transfer of <naotoutlet.com>); and Zimmermann Wear Pty Ltd v. Congj Buxar, NAF Claim No. 1761720 (transfer of <zimmermannoutlet.com>).
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DANSKO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the DANSKO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “danskoshop”) because “[t]he 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”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
It is obvious that the Disputed Domain Name contains the DANSKO Trademark in its entirety and simply adds the word “shop.” As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, numerous previous decisions under the Policy have found that a domain name containing a complainant’s trademark and the word “shop” is confusingly similar to the trademark. See, e.g., LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Neckar Rhein, WIPO Case No. D2017-2276 (transfer of <legoshop.space>) (“[t]he addition of the word ‘shop’ adds no distinctiveness and does not avoid a finding of confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with Complainant, is not an authorized reseller of Complainant’s footwear, or has any lawful access to commercial quantities of authentic DANSKO®-brand footwear”; “[t]here is no evidence to suggest that Respondent has registered the DANSKOSHOP.COM domain name to advance legitimate interests or for the bona fide offering or legitimate goods or services”; “Respondent has used the DANSKOSHOP.COM domain name to create a website that seeks to misdirect potential consumers from Complainant’s legitimate website”; and “[t]he website associated with the DANSKOSHOP.COM domain looks virtually identical to Complainant’s website, including the use of Complainant's DANSKO® marks, the names and images of Complainant’s products, as well as the overall ‘look and feel’ of Complainant’s copyright protected website.”
WIPO Overview 3.0, section 2.1, states: “While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any, of the enumerated factors is applicable here. However, Complainant’s allegations that Respondent created a website that falsely appears to be a website for or associated with Complainant, where Respondent fails to deliver promised merchandise, appears to be consistent with paragraph 4(b)(iv) of the Policy. Indeed, numerous previous UDRP panels have found bad faith under such circumstances. See, e.g., Medac Gesellschaft für klinische Spezialpräparate mbH v. Cancero Pharma, Cancer Foundation & CanceroPharma, WIPO Case No. D2016-1129 (finding bad faith where complainant alleged that respondent “is using the disputed domain name to sell products from the Complainant and its competitors, and a test purchase showed that the Respondent, after having received payment, failed to deliver the order”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <danskoshop.com> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: September 17, 2018