Steve Madden, Ltd v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1308001516546
Complainant is Steve Madden, Ltd (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stevemadden.co>, registered with CCI Reg S.A.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2013; the National Arbitration Forum received payment on August 26, 2013.
On August 26, 2013, CCI Reg S.A. confirmed by e-mail to the National Arbitration Forum that the <stevemadden.co> domain name is registered with CCI Reg S.A. and that Respondent is the current registrant of the name. CCI Reg S.A. has verified that Respondent is bound by the CCI Reg S.A. 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 September 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2013 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@stevemadden.co. Also on September 10, 2013, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <stevemadden.co> domain name on July 20, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Steve Madden, Ltd. of Long Island City, NY, USA. Complainant is the owner of the USA registered trademark STEVE MADDEN which it has used continuously since at least as early as 1997 in connection with the marketing and sale of clothing, various types of bags, as well as wallets and footwear. Complainant sells its products via retail stores throughout the USA and abroad and also globally via e-commerce on its websites, the primary site being <stevemadden.com>.
Respondent is Fundacion Private Whois/Domain Administrator which list its contact information as Zona 15 Panama. Respondent’s registrar’s address is listed as Bogota, Columbia. The Respondent registered the disputed domain name on July 20, 2010.
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.”).
Complainant states that it uses the STEVE MADDEN mark in connection with the sale of goods such as handbags, wallets, and footwear. Complainant explains that it was incorporated under the laws of New York on July 9, 1990, and was later reincorporated under the laws of Delaware in 1998. Complainant has operated its business under the STEVE MADDEN mark since 1990, selling over $1 billion USD of merchandise in 2012 alone. Complainant registered the STEVE MADDEN trademark with the USPTO (Reg. No. 2,077,735 registered on July 8, 1997). In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel agreed that it is irrelevant whether or not a mark was registered in any particular jurisdiction, so long as the mark has been shown to be recognized by the Policy’s requisite showing of some right in the mark. The Panel finds that registration of the STEVE MADDEN mark with the USPTO illustrates Policy ¶ 4(a)(i) rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant notes that Respondent has registered the <stevemadden.co> domain name. Complainant claims that Respondent merely adds the ccTLD “.co” to the mark. The Panel finds that this is largely correct, noting that spacing removed from the mark as an alteration is irrelevant. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also 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)). The Panel finds that the <stevemadden.co> domain name is confusingly similar to the STEVE MADDEN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 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). The Complainant has met this burden.
Complainant argues that Respondent is not known by the <stevemadden.co> domain name. Complainant contends that Respondent has not been licensed or authorized to otherwise use the STEVE MADDEN mark in domain names. Complainant states that it has not sponsored or affiliated itself with Respondent in any way. The Panel notes that the <stevemadden.co> domain name’s WHOIS information lists “DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS” as the registrant of record. In Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), the panel declined to make a finding under Policy ¶ 4(c)(i) when there was no evidence suggesting that the respondent was known by that name, and the complainant attested that it has empathetically disapproved of respondent’s use of any of complainant’s marks. The Panel finds that Respondent is not known by the <stevemadden.co> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the <stevemadden.co> domain name to phish for the personal information of Internet users. Complainant explains that Respondent purports to offer gift cards applicable towards Complainant’s goods in exchange for the Internet users’ mobile phone numbers, legal names, and e-mail addresses. The Panel notes that the <stevemadden.co> domain name resolves to a website congratulating the Internet user on visiting the website, and further requesting that the Internet user provide Respondent with personal information so as to have a chance at winning a gift card raffle. See Amended Complaint, at Attached Ex. H. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel determined that when an identical domain name was used to request personal information from Internet users—without the prior approval of the complainant—such a use was not bona fide or legitimate within the meanings of Policy ¶¶ 4(c)(i), (iii). The Panel finds that Respondent’s efforts to acquire the information requested in the <stevemadden.co> domain name’s intake form are for Respondent’s own benefit, and Respondent has thus failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Complainant states that Respondent is passing itself off as Complainant by attempting to offer gift cards applicable towards STEVEN MADDEN goods whilst using Complainant’s own marks to suggest that the gift cards are being offered by Complainant or its affiliates. The Panel notes that the Attached Exhibit H of the Amended Complaint illustrates that Respondent is indeed using Complainant’s mark in promoting its gift card program. The panel in Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003), found that the respondent was “passing off” as the complainant when the respondent’s actions could imply a relationship or affiliation so as to make Internet users believe that the respondent and the complainant were connected. The Panel here finds that Respondent’s attempt to pass itself off as Complainant provides additional evidence of Respondent’s lack of any Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant next argues that Respondent is a recalcitrant typosquatter with a history of bad faith under the UDRP. The Panel notes that Complainant has provided copies of prior UDRP decisions in Exhibit N of the Amended Complaint. See, e.g., Ashley Furniture Indus., Inc. v. Fundacion Private Whois / Domain Administrator, FA 1456872 (Nat. Arb. Forum Sept. 14, 2012); Alticor Inc. v. Fundacion Private Whois / Domain Administrator, FA 1454787 (Nat. Arb. Forum Sept. 3, 2012); Vera Bradley Inc. v. Fundacion Private Whois / Domain Administrator, FA 1453710 (Nat. Arb. Forum Aug. 31, 2012).
In Liberty Mut. Ins. Co. v. Bing Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel found that prior UDRP decisions against a respondent served as evidence of that respondent’s Policy ¶ 4(b)(ii) bad faith. The Panel here finds that Respondent’s prior UDRP proceedings, as noted above, serve as evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent’s attempt to phish for Internet user’s personal information through its use of the <stevemadden.co> domain name illustrates bad faith. The Panel again notes that the intake form on the domain name’s resolving website asks the Internet user to provide various personal information. See Amended Complaint, at Attached Ex. H. The Panel finds that Respondent is using the domain name in furtherance of a phishing scheme, and thus has acted in bad faith per Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant next argues that Respondent is typosquatting in bad faith. The Panel notes that if an Internet user seeking Complainant’s <stevemadden.com> domain name were to forget the final “m” in the domain name, the user would arrive at the <stevemadden.co> domain name. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that typosquatting occurs when the respondent takes advantage of a common error made in the spelling of a domain name, so as to send an Internet user seeking a particular trademark on the Internet to the respondent’s own websites. The Panel here finds that Respondent’s <stevemadden.co> domain name capitalizes on the likelihood that Internet users may mistakenly omit the “m” in the “.com” portion of Complainant’s <stevemadden.com> domain name and thus believe that the gift card offerings on the <stevemadden.co> domain name are legitimate and related to the <stevemadden.com> domain name. The Panel finds such conduct to amount to bad faith per Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <stevemadden.co> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 16, 2013
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