Steven Madden, Ltd. v. Deborah R. Heacock
Claim Number: FA1310001526988
Complainant is Steven Madden, Ltd. (“Complainant”), represented by Robert L. Tucker of Tucker & Latifi, LLP, New York, USA. Respondent is Deborah R. Heacock (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stevemadden.us>, registered with DYNADOT LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2013; the National Arbitration Forum received a hard copy of the Complaint on November 12, 2013.
On October 29, 2013, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <stevemadden.us> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the names. DYNADOT LLC has verified that Respondent is bound by the DYNADOT LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 13, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 Policy, the 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 makes the following contentions:
B. Respondent did not submit a Response.
1. Respondent’s <stevemadden.us> domain name is confusingly similar to Complainant’s STEVE MADDEN mark.
2. Respondent does not have any rights or legitimate interests in the <stevemadden.us> domain name.
3. Respondent registered or used the <stevemadden.us> domain name in bad faith.
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.
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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it uses the STEVE MADDEN mark in connection with its business involving the design, manufacture, and sale of shoes, boots and accessories. Complainant contends that it owns rights in the STEVE MADDEN mark through registrations of the mark with various trademark offices around the world, some of which date back over 16 years. However, the Panel notes that Complainant has not submitted evidence of its STEVE MADDEN trademark registrations. However, Complainant has submitted evidence suggesting that it owns rights in the STEVEN BY STEVE MADDEN mark through various registrations around the world, including the CIPO (e.g., Reg. No. 736,305 registered March 13, 2009), the SAIC (e.g., Reg. No. 4,302,756 registered May 21, 2008), and the MIIP (e.g., Reg. No. 1,300,781 registered July 27, 2012). See Complainant’s Exhibit C. The Panel notes that it has previously been determined that a complainant establishes rights in the mark by registering the mark in various trademark offices throughout the world. See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). It has also been held that a complainant does not need to register a mark in the respondent’s country of residence in order to establish rights in the mark under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel holds that Complainant’s registration of the STEVEN BY STEVE MADDEN mark with multiple trademark offices throughout the world establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant implies that the <stevemadden.us> domain name is confusingly similar to Complainant’s STEVEN BY STEVE MADDEN mark pursuant to Policy ¶ 4(a)(i). The Panel observes that the disputed domain name eliminates the words “Steven By” found in the STEVEN BY STEVE MADDEN mark. However, the Panel notes that it has previously been held that a domain name that incorporates some of a complainant’s mark is confusingly similar to the mark even though the domain name deletes some of the words found in the mark. See, e.g., Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel thus holds that the deletion of the words “Steven By” Complainant’s STEVEN BY STEVE MADDEN is insufficient to distinguish the <stevemadden.us> domain name from the mark. The Panel observes that the disputed domain name also eliminates the space found between words in the STEVEN BY STEVE MADDEN mark and adds the country-code top level domain (“ccTLD”) “.us.” However, the Panel notes that it has previously been held that a domain name’s elimination of a space found in a mark and addition of a ccTLD are not relevant for the purposes of a confusing similarity analysis under UDRP ¶ 4(a)(i). 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 in a mark does not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i)); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). For the foregoing reasons, the Panel holds that the <stevemadden.us> domain name is confusingly similar to Complainant’s STEVEN BY STEVE MADDEN mark.
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.”).
The Panel observes that although Complainant makes no contentions in regards to Policy ¶ 4(c)(i), there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <stevemadden.us> domain name. The Panel notes that in Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002), the panel concluded that the respondent did not own any service marks or trademarks that reflected the <persiankitty.us> domain name, and stated: “[f]urther, it does not appear that the [r]espondent is the owner or beneficiary of a trademark or service mark that is identical to the domain name at issue. See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).” Pursuant to this precedent, the Panel reasonably infers from the lack of evidence in the record that Respondent does not own service marks or trademarks reflecting the <stevmadden.us> domain name pursuant to Policy ¶ 4(c)(i), even though Complainant has not so alleged.
Complainant alleges that Respondent is not commonly known as <stevemadden.us> under Policy ¶ 4(c)(iii). Previous panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). In the instant proceedings, the Panel notes that the WHOIS information identifies the registrant of the <stevemadden.us> domain name as “Deborah R. Heacock.” The Panel thus holds that the WHOIS information suggests that Respondent is commonly known as “Deborah R. Heacock” and not as <stevemadden.us>. The Panel also concludes that nothing else in the record suggests that Respondent is commonly known as <stevemadden.us>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant suggests that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv), because the disputed domain name to direct Internet users to a commercial website that hosts links to third parties unrelated to Complainant’s business, as well as links to websites that purport to sell Complainant’s STEVE MADDEN products without Complainant’s authorization. See Complainant’s Exhibit B. The Panel observes that according to a screenshot submitted by Complainant, the <stevemadden.us> domain name resolves to a website promoting links entitled “financial services,” “Bank Financial,” “Personal Finance,” and “DIY LAUNDRY DETERGENT,” as well as links entitled “THE BEST STEVEMADDEN,” and “LOOKING FOR STEVE MADDEN?” See id. The Panel notes that it has previously been held that the use of a disputed domain name to promote links to third-party websites unrelated to the complainant is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under UDRP ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Similarly, it has been previously held that the use of a disputed domain name to sell the complainant’s own goods without authorization from the complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services or legitimate noncommercial or fair use where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Here, the Panel concludes from Complainant’s Exhibit B that the <stevemadden.us> domain name is being used to promote links to third-party websites unrelated to Complainant’s shoe and accessory business, including links to websites offering financial services. The Panel also infers that the links entitled “THE BEST OF STEVEMADDEN” and “LOOKING FOR STEVE MADDEN” resolve to websites offering the sale of Complainant’s STEVE MADDEN products without Complainant’s authorization. Accordingly, the Panel holds that Respondent’s use of the disputed domain name is not being used for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant argues that the disputed domain name attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s business, and that Respondent has thus demonstrated bad faith registration or use pursuant to Policy ¶ 4(b)(iv). The Panel notes that in T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), a previous panel held that the registration and use of a domain name confusingly similar to the complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constituted bad faith under UDRP ¶ 4(b)(iv). In the instant proceedings, the Panel holds that the <stevemadden.us> domain name uses Complainant’s STEVEN BY STEVE MADDEN mark because it incorporates most of the mark while merely eliminating the words “Steven By.” The Panel also recalls that in the instant proceedings, the disputed domain name resolves to a page that lists various generic links, including links entitled “financial services,” “Bank Financial,” “Personal Finance,” and “DIY LAUNDRY DETERGENT.” See Complainant’s Exhibit B. Accordingly, the Panel applies T-Mobile USA, supra, to hold that Respondent has demonstrated bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stevemadden.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 17, 2013
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