Dansko, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2206002002368
Complainant is Dansko, LLC (“Complainant”), represented by Camille M. Miller of Cozen O’Connor, Pennsylvania, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <danskoshoesireland.com>, <danskoshoesuk.com>, <danskoitalia.com>, <danskozapatosespana.com>, <danskodeutschland.com>, <danskochaussures.com>, <danskoshoesmexico.com>, <danskooutletfactory.com>, <danskofactoryoutlets.com>, <danskoshoescanada.com>, <danskofactorystore.com>, <danskocanadaoutlet.com>, <danskoshoesaustralia.com>, and <danskoshoesau.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2022; the Forum received payment on June 28, 2022.
On June 30, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <danskoshoesireland.com>, <danskoshoesuk.com>, <danskoitalia.com>, <danskozapatosespana.com>, <danskodeutschland.com>, <danskochaussures.com>, <danskoshoesmexico.com>, <danskooutletfactory.com>, <danskofactoryoutlets.com>, <danskoshoescanada.com>, <danskofactorystore.com>, <danskocanadaoutlet.com>, <danskoshoesaustralia.com>, and <danskoshoesau.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@danskoshoesireland.com, postmaster@danskoshoesuk.com, postmaster@danskoitalia.com, postmaster@danskozapatosespana.com, postmaster@danskodeutschland.com, postmaster@danskochaussures.com, postmaster@danskoshoesmexico.com, postmaster@danskooutletfactory.com, postmaster@danskofactoryoutlets.com, postmaster@danskoshoescanada.com, postmaster@danskofactorystore.com, postmaster@danskocanadaoutlet.com, postmaster@danskoshoesaustralia.com, and postmaster@danskoshoesau.com. Also on July 5, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant shows that the disputed domain names resolve to nearly identical websites, were registered with the same registrar, and were registered on or around the same dates; February 19 and February 21 through 23, 2022. In the absence of any assertion to the contrary, the Panel determines that the named Respondents are effectively controlled by the same person or entity and will refer to a single “Respondent” throughout this proceeding.
A. Complainant
1. Respondent’s <danskoshoesireland.com>, <danskoshoesuk.com>, <danskoitalia.com>, <danskozapatosespana.com>, <danskodeutschland.com>, <danskochaussures.com>, <danskoshoesmexico.com>, <danskooutletfactory.com>, <danskofactoryoutlets.com>, <danskoshoescanada.com>, <danskofactorystore.com>, <danskocanadaoutlet.com>, <danskoshoesaustralia.com>, and <danskoshoesau.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s DANSKO mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent did not file a Response.
Complainant, Dansko, LLC, is a footwear company. Complainant holds a registration for the DANSKO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,712,957, registered on May 6, 2003).
Respondent registered the disputed domain names between February 19 and 23, 2022, and primarily uses them to compete with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the DANSKO mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
Respondent’s disputed domain names all contain Complainant’s DANSKO mark and add the descriptive terms “shoes” (or “zapatos,” which means shoes) “outlet,” “outlets,” “factory” or “store,” and the geographic terms “ireland,” “uk,” “mexico,” “canada,” “australia,” “au,“ “italia,” “deutschland” or “espana.” Adding a descriptive or geographic term and the “.com” gTLD is not enough to distinguish a domain name from the mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s DANSKO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names, as Respondent is not commonly known by the domain names and is not authorized to use the DANSKO mark. The WHOIS information identifies Respondent as “Client Care / Web Commerce Communications Limited.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”)
Complainant also argues that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair because it uses them to pass off as Complainant and purport to offer DANSKO products. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”) Complainant provides screenshots of the disputed domain names’ resolving webpages, where Respondent displays Complainant’s mark and purports to offer DANSKO products. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s lack of rights under Policy ¶¶ 4(c)(i) and (iii) is also shown by inactively holding some of the disputed domain names. Complainant provides screenshots of the <danskoshoescanada.com>, <danskofactorystore.com>, and <danskoshoesau.com> domain names’ resolving websites, which do not display active content. The Panel finds that this is further evidence that Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the disputed domain names in bad faith by creating a likelihood of confusion and offering products in competition with Complainant for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to offer competing products evinces bad faith registration and use. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”) Accordingly, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent also demonstrates bad faith by failing to make active use of some of the disputed domain names. Under Policy ¶ 4(a)(iii), failing to make active use of a domain name is evidence of bad faith registration and use. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). The Panel therefore finds bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DANSKO mark. The Panel agrees, noting that Respondent purports to offer DANSKO products, and finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DANSKO mark, demonstrating further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danskoshoesireland.com>, <danskoshoesuk.com>, <danskoitalia.com>, <danskozapatosespana.com>, <danskodeutschland.com>, <danskochaussures.com>, <danskoshoesmexico.com>, <danskooutletfactory.com>, <danskofactoryoutlets.com>, <danskoshoescanada.com>, <danskofactorystore.com>, <danskocanadaoutlet.com>, <danskoshoesaustralia.com>, and <danskoshoesau.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 2, 2022
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