Dansko, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2207002004873
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 <danskoclogsclearance.com> and <danskoschuhehersteller.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2022; the Forum received payment on July 19, 2022.
On July 21, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <danskoclogsclearance.com> and <danskoschuhehersteller.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 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@danskoclogsclearance.com, postmaster@danskoschuhehersteller.com. Also on July 22, 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 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 entities which control the domain names 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.” The at-issue domain names address nearly identical websites and were registered with the same registrar on about the same date. Furthermore, WHOIS information lists Kuala Lumpur as registrants’ address.
While it is possible that the underlying registrants may or may not differ nominally, they clearly appear to be related to, or controlled by, the same person, persons, or entity. Notably, Complainant’s contention that the domain names’ registrants be treated as a single entity in the instant proceeding is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding and collectively will be referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant, Dansko, LLC, provides comfort footwear to customers globally.
Complainant asserts rights in the DANSKO mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <danskoclogsclearance.com> and <danskoschuhehersteller.com> domain names are confusingly similar to Complainant’s mark because they contain the DANSKO mark in its entirety, merely adding descriptive terms and the generic top-level domain (gTLD) “.com” to form the domain names.
Respondent does not have rights or legitimate interests in the <danskoclogsclearance.com> or <danskoschuhehersteller.com> domain name. Respondent is not licensed or authorized to use Complainant’s DANSKO mark and is not commonly known by the at-issue domain names. Instead, Respondent uses the at-issue domain names to pass itself off as Complainant.
Respondent registered and uses the at-issue domain names in bad faith. Respondent attempts to pass itself off as Complainant for commercial gain. Respondent registered the domain names with constructive and actual knowledge of Complainant’s rights in the DANSKO mark. Finally, Respondent registered the at-issue domain names using incomplete WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DANSKO trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the DANSKO trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and to address websites that purport to offer DANSKO branded products for sale.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has multiple USPTO trademark registrations for its DANSKO trademark as well as other national registrations worldwide. A single USPTO registration, or other national trademark registration, is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). 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).”). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <danskoclogsclearance.com> and <danskoschuhehersteller.com> domain names each contain Complainant’s DANSKO trademark followed by generic terms, i.e. “clogs clearance” and “schuher hersteller” (the German terms for to “shoes” and “manufacturer.” Both domain names conclude with the top-level domain name “.com.” The differences between either of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s DANSKO mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <danskoclogsclearance.com> and <danskoschuhehersteller.com> domain names are each confusingly similar to Complainant’s DANSKO mark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does not identify either domain names’ registrant by a name that is suggestive of one of the at-issue domain names and the record before the Panel contains no evidence that tends to prove that either nominal registrant is commonly known by one (or both) of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <danskoclogsclearance.com> or <danskoschuhehersteller.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s uses the <danskoclogsclearance.com> and <danskoschuhehersteller.com> domain names to address a website(s) that mimics Complainant’s official website and there purports to offer Complainant’s products for sale. Respondent’s use of the at-issue domain names to pass itself off as Complainant and offer Complainant’s products indicates that neither domain name promotes a bona fide offering of goods or services nor legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing and absent any contrary evidence from Respondent or otherwise, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
By misappropriating Complainant’s trademark and other intellectual property to use in its domain names and associated charlatan websites Respondent attempts to pass itself off as Complainant and thereby misdirect unwitting internet users into purchasing products from Respondent. Respondent’s use of the at-issue domain names in this manner disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see additionally Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).
Additionally, Respondent had actual knowledge of Complainant’s rights in the DANSKO mark when it registered <danskoclogsclearance.com> and <danskoschuhehersteller.com> as domain names. Respondent’s actual knowledge is evident given the notoriety of Complainant and its trademark as well as from Respondent’s passing itself off as Complainant via the domain names and associate website(s) as discussed elsewhere herein. Respondent’s registration of the two at-issue confusingly similar domain names with knowledge of Complainant’s trademark rights therein shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danskoclogsclearance.com> and <danskoschuhehersteller.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 16, 2022
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