Dansko, LLC v. zhang wu
Claim Number: FA1711001757745
Complainant is Dansko, LLC (“Complainant”), represented by Camille M Miller of Cozen O'Connor, USA. Respondent is zhang wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danskoshoes.us.com>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated recently.
Complainant submitted a Complaint to the Forum electronically on November 8, 2017; the Forum received payment on November 8, 2017.
On November 9, 2017, 1API GmbH confirmed by e-mail to the Forum that the <danskoshoes.us.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On November 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2017 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@danskoshoes.us.com. Also on November 15, 2017, 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 December 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 CDRP 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 CDRP Policy, CDRP 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant registered the DANSKO mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,712,957, registered May 6, 2006). See Compl. Annex B. Respondent’s <danskoshoes.us.com> domain name is confusingly similar to Complainant’s mark as it incorporates the entirety of Complainant’s DANSKO mark in conjunction with the descriptive term “shoes,” as well as the “.us” country code top-level-domain (“ccTLD”) and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <danskoshoes.us.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent hosts Complainant’s images and trademarks in an attempt to commercially benefit from a fraudulent sales platform in which Respondent purports to sell Complainant’s shoes, but consumers never receive them. See Compl. Annex D.
Respondent registered or used the <danskoshoes.us.com> domain name in bad faith. Respondent disrupts Complainant’s business by purporting to sell Complainant’s products. Respondent intentionally attracts, for commercial gain, Internet users who otherwise believe they are reaching Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leader in the provision of comfort footwear.
2. Complainant has established its trademark rights in the DANSKO mark by virtue of having registered the same with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,712,957, registered May 6, 2006).
3. Respondent registered the <danskoshoes.us.com> domain name on April 13, 2017.
4. Respondent uses the domain name to host Complainant’s images and trademarks in an attempt to benefit commercially from a fraudulent sales platform in which Respondent falsely purports to sell Complainant’s shoes.
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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the DANSKO mark based upon registration with the USPTO (e.g. Reg. No. 2,712,957, registered May 6, 2006). See Compl. Annex B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the DANSKO mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DANSKO mark. Complainant argues that Respondent’s <danskoshoes.us.com> domain name is confusingly similar to Complainant’s mark as it incorporates the entirety of Complainant’s DANSKO mark in conjunction with the descriptive term “shoes,” as well as the “.us” ccTLD and the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The Panel therefore finds that the <danskoshoes.us.com> domain name is confusingly similar to the DANSKO mark under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DANSKO mark and has used it in its entirety in the <danskoshoes.us.com> domain name, adding only the generic word “shoes”;
(b) Respondent registered the <danskoshoes.us.com> domain name on April 13, 2017;
(c) Respondent uses the domain name to host Complainant’s images and trademarks in an attempt to benefit commercially from a fraudulent sales platform in which Respondent falsely purports to sell Complainant’s shoes;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <danskoshoes.us.com> domain name as, where a response is lacking, relevant information to show whether the registrant is commonly known by the domain name includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with the registrant. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “zhang wu” as the registrant. See Compl. Annex A. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the DANSKO mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <danskoshoes.us.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant next argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass itself off as Complainant for its own commercial gain. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant submits Respondent hosts Complainant’s images and trademarks in an attempt to benefit commercially from a fraudulent sales platform in which Respondent purports to sell Complainant’s shoes, but consumers never receive them. See Compl. Annex D. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent disrupts Complainant’s business by purporting to sell Complainant’s products. Use of a disputed domain name to sell a complainant’s’ products represents bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”). Complainant contends Respondent uses the website to fraudulently accept payments from consumers but never sends any goods. The Panel agrees with Complainant and finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant contends Respondent intentionally attracts, for commercial gain, Internet users who otherwise believe they are reaching Complainant. Use of a disputed domain name to host images and offers to intentionally create and capitalize from customer confusion for commercial gain represents bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Complainant contends Respondent registered a confusingly similar domain name to host a fraudulent listing with Complainant’s marks to capitalize from the confusion created for consumers who mistakenly believe they are visiting an authorized website for Complainant’s DANSKO products. See Compl. Annex D. The Panel agrees with Complainant and find Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DANSKO mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danskoshoes.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 12, 2017
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