WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steven Madden, Ltd. v. Domain Administrator, See PrivacyGuardian.org / Anne Sankt, Janina Konig, Martina Berg, Christian Traugott, Eric Schwab, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Michelle Jager, Katharina Meister, Web Commerce Communications Limited

Case No. D2021-2948

1. The Parties

The Complainant is Steven Madden, Ltd., United States of America (“United States”), represented by Ballard Spahr, LLP, United States.

The Respondents are Domain Administrator, See PrivacyGuardian.org, United States / Anne Sankt, Janina Konig, Martina Berg, Christian Traugott, and Eric Schwab, Germany; Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Michelle Jager and Katharina Meister, Germany; and, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrars

The disputed domain names <stevemaddenaus.com>, and <stevemaddenbutik.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “First Registrar”).

The disputed domain names <stevemaddencaoutlet.com>, <stevemaddenchile.com>, <stevemaddenhrvatska.com>, <stevemaddennederland.com>, and <stevemaddenoutletgreece.com> are registered with NameSilo, LLC (the “Second Registrar”).

The disputed domain names <stevemaddenieoutlet.com>, and <stevemaddenrea.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Third Registrar”).

The First, Second, and Third Registrar are cumulatively referred to hereinafter as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 8, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names.

On September 8, 2021, the Third Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint.

On September 8, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint.

On September 10, 2021, the First 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 and contact information in the Complaint.

The Center sent an email communication to the Complainant on September 13, 2021, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2021.

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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 15, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 25, 2021. 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 was founded in 1990 by the fashion designer Steven Madden. It is a publicly traded apparel company and owner of several trademark registrations around the world, amongst which are the following (Annexes 16A-16-F to the Complaint):

- United States registration No. 2,012,115 for the word mark STEVE MADDEN, registered on October 29, 1996, in class 25;

- Canadian registration No. 1002246 for the word mark STEVE MADDEN, registered on January 10, 2001, in classes 14, 18, 25, and 35; and

- European Union registration No. 10206415 for the word mark STEVE MADDEN, registered on January 18, 2012, in classes 9, 18, and 25.

The domain names under dispute are the following:

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a successful apparel company whose goods are sold throughout the world under the STEVE MADDEN trademark, which enjoys a substantial and global reputation. Extensively promoted and enforced, this trademark has acquired extensive consumer recognition and invaluable goodwill.

According to the Complainant, the disputed domain names are under common control given that (i) eight of the nine disputed domain names at the time of the filing of the procedure resolved to identical or extremely similar websites featuring the STEVE MADDEN trademark prominently displayed; (ii) three disputed domain names share the same IP address (196.245.56.190) and five disputed domain names share the same IP address (196.245.56.156), also sharing the same name servers; (iii) the disputed domain names have a similar naming pattern; (iv) the WhoIs information provided appears to be false, also having generic email addresses comprising of combinations of letters and numbers at “126.com” which is a free Chinese-language email service provider.

Under the Complainant’s view, the disputed domain names incorporate the Complainant’s STEVE MADDEN trademark in its entirety, not preventing the addition of generic terms (“outlet”, “rea” (from the Swedish, “discount” in English), and “butik”), country abbreviations (“Ca” for Canada, “Ie” for Ireland, or “Aus” for Australia) or country names (“Chile”, “Greece”, “Nederland”, or “Hrvatska”) a finding of confusing similarity.

Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:

i) the Respondents are not commonly known by the disputed domain names;

ii) the Complainant has never consented to Respondents’ use of the STEVE MADDEN trademark in connection with the disputed domain names, and there is no affiliation or connection between the Complainant and the Respondents; and

iii) the use being made of the disputed domain names, in direct competition with the Complainant, as well as the inactive use of one of the disputed domain names cannot constitute a bona fide offering of goods and services under the Policy.

As to the registration and use of the disputed domain names in bad faith, the Complainant states that:

i) the Respondents knew of the Complainant’s trademark when registering the disputed domain names given the reproduction of the Complainant’s trademark and products in the websites relating to the disputed domain names;

ii) the present passive holding of three of the disputed domain names constitutes use in bad faith especially since the Respondent has taken steps to mask its identity through WHOIS privacy services and there is no plausible explanation for the selection of the disputed domain names in view of the Complainant’s

well-known trademark depicted therein.

B. Respondents

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(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 Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names 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.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the five disputed domain names dealt with at the same procedure, given that: (a) six of the nine disputed domain names were registered on the same day and the remaining three disputed domain names on a second day within eight days; (b) all disputed domain names share a similar naming pattern; (c) eight of the nine disputed domain names at the time of the filing of the procedure resolved to identical or extremely similar websites featuring the STEVE MADDEN trademark prominently displayed; (d) the disputed domain names share IP addresses and name servers; and (e) no objection was made by the Respondents regarding consolidation.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established rights over the STEVE MADDEN trademark duly registered in several jurisdictions across the world.

The disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of terms (“outlet”, “rea” (from the Swedish, “discount” in English), and “butik”), country abbreviations (“ca” for Canada, “ie” for Ireland, or “aus” for Australia) or country names (“Chile”, “Greece”, “Nederland”, or “Hrvatska”) do not prevent a finding of confusing similarity.

It is well accepted that the first element functions primarily as a standing requirement and that the 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).

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

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

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondents, which have not been commonly known by the disputed domain names and neither have received the Complainant’s consent to use the STEVE MADDEN trademark in connection with the disputed domain names, also not being affiliated or connected with the Complainant.

Also, according to the evidence submitted by the Complainant, the use made of eight of the disputed domain names in connection with online shops depicting the Complainant’s products and trademark clearly suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the dispute domain names in these circumstances. Notwithstanding the fact that three of the disputed domain name are currently inactive and one of them seems to never have resolved to an active website, the construction of the disputed domain names themselves is such to carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s products and trademark on the online shops available at eight of the disputed domain names.

Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:

a. the absence of a formal Response by the Respondents;
b. the choice to retain a privacy protection service so as to conceal the Respondents’ identity; and
c. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain names, communications not being delivered to them by courier.

Furthermore, the above, when taken together, further support an inference of bad faith regardless of the current non-use of some of the disputed domain names. See section 3.3 of the WIPO Overview 3.0.

For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names.

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, <stevemaddenaus.com>, <stevemaddenbutik.com>, <stevemaddencaoutlet.com>, <stevemaddenchile.com>, <stevemaddenhrvatska.com>, <stevemaddenieoutlet.com>, <stevemaddennederland.com>, <stevemaddenoutletgreece.com>, and <stevemaddenrea.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: November 8, 2021