national arbitration forum

 

DECISION

 

Steve Madden, Ltd v. Ancient Holdings, LLC

Claim Number: FA1207001453354

 

PARTIES

Complainant is Steve Madden, Ltd (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Ancient Holdings, LLC (“Respondent”), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <steevemadden.com>, registered with Go France Domains, LLC.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2012; the National Arbitration Forum received payment on July 13, 2012.

 

On July 17, 2012, Go France Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <steevemadden.com> domain name is registered with Go France Domains, LLC and that Respondent is the current registrant of the name.  Go France Domains, LLC has verified that Respondent is bound by the Go France Domains, LLC 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 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2012 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@steevemadden.com.  Also on July 19, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that it has rights in the STEVE MADDEN mark, which it uses in connection with an assortment of branded clothing. Complainant contends that it owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STEVE MADDEN mark (e.g., Reg. No. 2,012,115 registered October 29, 1996). Complainant further states that the <steevemadden.com> domain name is confusingly similar to the STEVE MADDEN mark and resolves to a website that displays links to competitive websites. Additionally, Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent registered the <steevemadden.com> domain name in bad faith based on the following: Respondent offers the disputed domain name for sale, registered and uses the disputed domain name as part of a pattern of bad faith registration and use, disrupts Complainant’s business, the disputed domain name is meant to take commercial advantage of Internet users’ mistakes, and Respondent engaged in typosquatting

 

B. Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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(e), 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 (Nat. Arb. 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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the STEVE MADDEN mark which is used in connection with a variety of clothing. Complainant asserts that it owns the USPTO registrations for the STEVE MADDEN mark (e.g., Reg. No. 2,012,115 registered October 29, 1996). Panels have found that registration of a mark with the USPTO is sufficient evidence of having rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  Therefore, the Panel finds that Complainant has rights in the STEVE MADDEN mark under Policy ¶ 4(a)(i).

 

Complainant states that the <steevemadden.com> domain name is confusingly similar to the STEVE MADDEN mark. Complainant contends that Respondent has done nothing more than add one letter to the mark, delete the space between words, and add the generic top-level domain (“gTLD”) “.com” to create the disputed domain name. The Panel finds that the addition of a single letter fails to differentiate a disputed domain name from a mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i))The Panel also finds that the deletion of spaces and addition of a gTLD is irrelevant to a determination of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  Therefore, the Panel finds that Respondent’s <steevemadden.com> domain name is confusingly similar to the STEVE MADDEN mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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 rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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.”).

 

Complainant argues that Respondent is not commonly known by the <steevemadden.com> domain name.  Complainant contends that Respondent is not sponsored by, or legitimately affiliated with, Complainant and that Respondent is not permitted to use Complainant’s STEVE MADDEN mark.  Due to Respondent’s failure to respond to this case, there is no evidence in the record to rebut Complainant’s arguments.  Moreover, the Panel finds that the WHOIS information, which identifies the registrant of the <steevemadden.com> domain name as “Ancient Holdings, LLC,” is not similar to the disputed domain name.  Prior panels have determined that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the domain name and the complainant did not authorize the respondent to use the complainant’s mark.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).  Therefore, the Panel concludes that Respondent is not commonly known by the <steevemadden.com> domain name pursuant to Policy ¶ 4(c)(ii). 

 

Complainant alleges that Respondent is using the <steevemadden.com> domain name to redirect unsuspecting Internet users to Respondent’s website, which Complainant claims hosts third-party hyperlinks, some of which resolve to Complainant’s competitors.  The Panel notes that some of the hyperlinks are listed as “WOMEN’S SUMMER FASHION,” JCPENNEY© OFFICIAL SITE,” and “DSW SHOE WAREHOUSE.”  Previous panels have held that the use of a disputed domain name to host competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.  See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).  The Panel agrees and finds accordingly under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent offers the <steevemadden.com> domain name for sale to the general public.  Complainant claims that the <steevemadden.com> domain name is listed for sale on an auction website.  Past panels have found that the general offer of a disputed domain name for sale is evidence of bad faith registration and use.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).  The Panel finds Respondent guilty of Policy ¶ 4(b)(i) bad faith registration and use.

 

According to Complainant, Respondent is a serial cybersquatter.  Complainant alleges that Respondent has been the respondent in previous UDRP proceedings in which the panels ordered Respondent to transfer the disputed domain names to the respective complainants.  See comparis.ch AG v. Ancient Holdings, LLC, DCH2011-0019 (WIPO Aug. 15, 2011); see also Comparis.ch AG v. Ancient Holdings, LLC, DCH2008-0013 (WIPO Oct. 27, 2008).  Previous panels have concluded that past UDRP proceedings involving the respondent are evidence that the respondent registered and uses a disputed domain name in bad faith.  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).  Based on the prior UDRP proceedings provided by Complainant, the Panel holds that Respondent registered and uses the <steevemadden.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  

 

Complainant alleges that Respondent’s registration and use of the <steevemadden.com> domain name disrupts Complainant’s business by providing competing hyperlinks at the resolving website.  Prior panels found bad faith registration and use when the respondent’s website contained competing hyperlinks because the resolving website disrupted the complainant’s business.  See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).  Thus, the Panel determines that Respondent’s registration and use of the <steevemadden.com> domain name disrupts Complainant’s business, constituting bad faith registration and use under Policy ¶ 4(b)(iii). 

 

Complainant claims that Respondent registered and uses the <steevemadden.com> domain name in connection with generating revenue as a “click-through” website.  Complainant argues that Respondent uses Complainant’s STEVE MADDEN mark in the disputed domain name in order to take advantage of Complainant’s well known mark and mislead Internet users.  Past panels have found that the registration and use of a disputed domain name to host competing hyperlinks, from which the respondent received click-through fees, was in bad faith under Policy ¶ 4(b)(iv).  See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).  The Panel concludes that Respondent is attempting to commercially benefit by creating Internet user confusion and, therefore, the Panel holds that Respondent registered and uses the <steevemadden.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 

 

Complainant alleges that Respondent’s <steevemadden.com> domain name is a clear example of typosquatting and that Respondent’s typosquatting behavior is evidence of bad faith registration and use.  The Panel notes that the <steevemadden.com> domain name contains a common misspelling of Complainant’s STEVE MADDEN mark.  Previous panels have found that evidence of typosquatting is evidence of a respondent’s bad faith registration and use.  See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).  Consequently, the Panel determines that Respondent is guilty of typosquatting, and that Respondent registered and uses the <steevemadden.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <steevemadden.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret), Panelist

Dated:  August 16, 2012

 

 

 

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