Dansko, LLC v. Client Care / Web Commerce Communications Limited / Martina Berg / Richard Williams / Jan Nadel / Marie Grijalva
Claim Number: FA2111001973159
Complainant is Dansko, LLC (“Complainant”), represented by Camille Miller of Cozen O’Connor, Pennsylvania, USA. Respondent is Client Care / Web Commerce Communications Limited / Martina Berg / Richard Williams / Jan Nadel / Marie Grijalva (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <danskobuty.com>, <danskocanadas.com>, <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited; Mat Bao Corporation.
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 submitted a Complaint to the Forum electronically on November 12, 2021; the Forum received payment on November 12, 2021.
On November 16, 2021; November 19, 2021, Alibaba.Com Singapore E-Commerce Private Limited; Mat Bao Corporation confirmed by e-mail to the Forum that the <danskobuty.com>, <danskocanadas.com>, <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited; Mat Bao Corporation and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited; Mat Bao Corporation has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited; Mat Bao Corporation 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 November 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2021 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@danskobuty.com, postmaster@danskocanadas.com, postmaster@danskoclogsusa.com, postmaster@danskoireland.com, postmaster@danskojapan.com, postmaster@danskophilippine.com, postmaster@danskoschoenen.com, postmaster@danskosingapore.com, postmaster@danskoslovensko.com, postmaster@danskofrance.com, postmaster@danskomexico.com, postmaster@danskoschuhe.com, postmaster@danskouk.com, postmaster@danskozoccoli.com, postmaster@danskoshoesindia.com, postmaster@danskoschuheschweiz.com, postmaster@zapatosdanskoespana.com. Also on November 29, 2021, 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 28, 2021, 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 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
In the instant proceedings, Complainant has alleged that the entities which control the domain name(s) at issue are effectively controlled by the same person and/or entity, which is 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 contends that the disputed domain names are controlled by the same entity because the websites are highly similar, all of the domain names use the DANSKO mark and combine it with a generic term related to Complainant ‘s goods or a geographic location, and the disputed domain names were registered within a similar time period and with one of two registrars.
In the light of that evidence and all the circumstances, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is a 100% employee-owned U.S.-based company established in 1990. Complainant has rights in the DANSKO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,265,194 registered July 17, 2007). See Compl. Exhibit A. Respondent’s <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names are virtually identical and confusingly similar to Complainant’s mark because they incorporate the DANSKO mark in its entirety and merely add the terms “buty,” “canadas,” “clogsusa,” “ireland,” “japan,” “philippine,” “schoenen,” “singapore,” “slovensko,” “france,” “mexico,” “schuhe,” “uk,” “zoccoli,” “shoesindia,” “schuheschweiz,” and “zapatos” and “espana” respectively and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the DANSKO mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve pages offering Complainant’s own goods for sale.
Respondent registered and uses the <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names in bad faith. Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DANSKO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of comfort footwear and related goods and services.
2. Complainant has established its rights in the DANSKO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,265,194 registered July 17, 2007).
3. Respondent registered the <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names from August 17, 2021 to September 30, 2021.
4. Respondent has caused the disputed domain names to be used so that they resolve to internet pages offering Complainant’s own goods for sale, and which indicate that the Respondent is attempting to mislead consumers as to a connection or affiliation between Respondent and Complainant and also that the websites are illegitimate and fraudulent.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DANSKO mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 3,265,194 registered July 17, 2007). See Compl. Exhibit A. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the DANSKO mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DANSKO mark. Complainant argues Respondent’s <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names are confusingly similar to Complainant’s DANSKO mark as they incorporate the DANSKO mark in its entirety and merely add the terms “buty,” “canadas,” “clogsusa,” “ireland,” “japan,” “philippine,” “schoenen,” “singapore,” “slovensko,” “france,” “mexico,” “schuhe,” “uk,” “zoccoli,” “shoesindia,” “schuheschweiz,” and “zapatos” and “espana” respectively and adds the “.com” gTLD. The addition of a generic or descriptive phrase or geographic term and gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). 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).” Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per 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 names under Policy ¶ 4(a)(ii), then 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”).
(a) Respondent has chosen to take Complainant’s DANSKO trademark and to use it in its domain names, incorporating the mark and adding the generic words “buty,” “canadas,” “clogsusa,” “ireland,” “japan,” “philippine,” “schoenen,” “singapore,” “slovensko,” “france,” “mexico,” “schuhe,” “uk,” “zoccoli,” “shoesindia,” “schuheschweiz,” and “zapatos” and “espana” respectively, none of which negates the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names from August 17, 2021 to September 30, 2021;
(c) Respondent has caused the disputed domain names to be used so that they resolve to internet pages offering Complainant’s own goods for sale, and which indicate that the Respondent is attempting to mislead consumers as to a connection or affiliation between Respondent and Complainant and also that the websites are illegitimate and fraudulent;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <danskobuty.com>, <danskocanadas.com> , <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the DANSKO mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrants as “Client Care,” “Web Commerce Communications Limited,” “Martina Berg,” “Richard Williams,” “Jan Nadel,” and “Marie Grijalva,” and there is no other evidence to suggest that Respondent was authorized to use the DANSKO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as the disputed domain names redirect to other sites offering Complainant’s goods. Where a respondent uses a disputed domain name to offer a complainant’s goods and services, it is open to the Panel to find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Here, Complainant provide printouts of the disputed domain names being used to offer Complainant’s own goods. See Compl. Exhibit C. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing websites for commercial gain. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); See also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); See also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As previously noted, Complainant provide printouts of the disputed domain names being used to offer Complainant’s own goods. See Compl. Exhibit C. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the DANSKO mark at the time of registering the disputed domain names. Prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel is able to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations as well as its commercial presence and reputation. As such, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel now makes.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danskobuty.com>, <danskocanadas.com>, <danskoclogsusa.com>, <danskoireland.com>, <danskojapan.com>, <danskophilippine.com>, <danskoschoenen.com>, <danskosingapore.com>, <danskoslovensko.com>, <danskofrance.com>, <danskomexico.com>, <danskoschuhe.com>, <danskouk.com>, <danskozoccoli.com>, <danskoshoesindia.com>, <danskoschuheschweiz.com>, and <zapatosdanskoespana.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 29, 2021
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