Dansko, LLC v. Heike Klein
Claim Number: FA2207002004076
Complainant is Dansko, LLC (“Complainant”), represented by Camille M. Miller of Cozen O'Connor, Pennsylvania, USA. Respondent is Heike Klein (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danskozoccoli.co>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2022; the Forum received payment on July 13, 2022.
On July 13, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <danskozoccoli.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@danskozoccoli.co. Also on July 14, 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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DANSKO mark established by its ownership of its portfolio of trademark and service mark registrations described below. 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)).
Complainant further claims rights in the DANSKO mark through extensive use of the mark in connection with footwear goods since at least as early as 1990 and adds that it has invested substantial effort and resources over a long period to develop widespread recognition and valuable goodwill in its DANSKO mark which has become recognized by customers and potential customers as being distinctive of Complainant’s products. 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)).
Complainant submits that the disputed domain name <dansozoccoli.co> is confusingly similar to its DANSKO mark, arguing that the disputed domain name features Complainant’s entire DANSKO mark in its entirety, merely adding the term “zoccoli”.
Complainant submits that the term “zoccoli” means “clogs” in Italian and argues that the additional term does not adequately distinguish the disputed domain name from Complainant’s DANSKO mark. See Dansko, LLC v. Client Care / Web Commerce Communications Limited / Martina Berg / Richard Williams / Jan Nadel / Marie Grijalva, FA 1973159 (Forum Dec. 29, 2021) (finding the addition of a generic or descriptive phrase or geographic term, including “zoccoli”, failed to distinguish a disputed domain name sufficiently from the mark).
Further, the term “zoccoli” is descriptive of the commercial character of Complainant’s footwear business. Previous panels have held that “descriptive words that relate to Complainant’s business or operations tend to heighten any resulting confusing similarity.” See Nike, Inc. v. Fang Wei c/o Fang Wei a/k/a Liu Wen c/o Liu Wen a/k/a Cathy Pearce c/o Cathy Pearce a/k/a Hai Mingwe c/o Hai Mingwe, FA 1272458 (Forum Aug. 21, 2009) (emphasis added). Thus, Respondent’s use and registration of the disputed domain name only stands to increase consumer confusion between them and Complainant’s DANSKO mark.
Complainant adds that the Colombian country-code top level domain (“ccTLD”) <.co> does not create any meaningful distinction from Complainant’s mark. See King & Spalding LLP v. Telisa Moore, FA 1999983 (Forum July 8, 2022) (“The ccTLD ‘.co’ in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s mark as a TLD is a necessary part of the Domain Name.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that according to the WHOIS details, Respondent is named “Hieke Klein” which supports Complainant’s assertion that Respondent is not commonly known as “Dansko” nor any variation thereof. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant refers to a copy of a map attached as an exhibit in an annex to the Complaint, and argues that the disputed domain name was registered using seemingly false WHOIS contact information, which is further evidence of Respondent’s lack of rights or legitimate interest in the disputed domain name. The WHOIS details show Respondent is based in a named town in Germany. But Respondent also claims to be based in Berlin, a city over 250 kilometers from that town. See CNU Online Holdings, LLC v. Mardva Logsdon, cashnetusafinance, WIPO Case No. D2017-0732 (stating “nothing in [the respondent’s] WHOIS information” implies that [the respondent] is commonly known” by the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). See also Sturm, Ruger & Co., Inc. v. Hulmiho Ukolen / Poste restante, FA 1959501 (Forum Sept. 24, 2021) (pointing to the respondent’s false or incomplete WHOIS contact information in determining respondent has no rights or legitimate interests in the domain name).
Complainant contends that therefore there is presently no evidence of any connection between Respondent and the disputed domain name.
Moreover, Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of its DANSKO mark in the disputed domain name or otherwise.
Referring to a copy of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant submits that the exhibit shows that the disputed domain name resolves to an imposter website prominently featuring Complainant’s registered DANSKO mark.
Complainant adds that the website to which the disputed domain name resolves, is confusingly similar to Complainant’s official website at <www.danske.com>.
Complainant submits that therefore the evidence shows that Respondent purports to offer identical footwear goods and takes particular care to mislead consumers by using an icon of the Italian flag on the infringing website, which comports with Respondent’s use of “zoccoli” in the disputed domain name.
Additionally, it is contended that Respondent relies on indicia of online commerce to mislead consumers, employing elements such as the shopping cart icon and search bar on the website to which the disputed domain name resolves. Complainant contends that by providing these details, Respondent therefore creates a false sense legitimacy that is nearly certain to confuse consumers into believing it is related to or affiliated with Complainant when it is not. Earlier Panels have held that such actions evidence a respondent’s lack of legitimate rights or interests in the disputed domain name. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find respondent’s rights and legitimate interests in a domain name when it resolved to a website “designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”).
Complainant concludes that there is no evidence that Respondent is using the disputed domain name for a bona fide offering of goods or services or making any legitimate noncommercial or fair use of the disputed domain name, but instead is using the disputed domain name to cause confusion with Complainant. Accordingly, Respondent cannot establish any rights or legitimate interests in the disputed domain name and cannot prevail under Policy ¶ 4(c)(i-iii).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent had constructive notice of the DANSKO mark for which Complainant owns multiple trademark registrations. See Barney's Inc. v. BY Bulletin Board, WIPO Case No. D2000-0059 ("Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant's rights in its trademark.").
Complainant adds that the evidence shows that Respondent had full knowledge of Complainant’s rights in the DANSKO mark because the website to which it resolves prominently displays Complainant’s DANSKO mark. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Furthermore, Complainant argues that the disputed domain name resolves to the Respondent’s website which is designed for commercial gain and to promote competing goods. Complainant argues that Respondent solicits business from Internet users while deceptively appearing as Complainant. Previous Panels have held that such conduct is indicative of bad faith registration and use under the Policy. See Brooks Sports, Inc. v. Liuzhao, FA 1900494 (Forum July 24, 2020), the panel held that the respondent showed bad faith registration and use when it used the complainant's mark on a website promoting competing footwear products. In the decision, the panel stated, “Respondent registered and uses the Domain Name in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s...mark for commercial gain by using the confusingly similar domain name to resolve to a website that either offers counterfeit versions of Complainant’s products or offers genuine versions but seeks to mislead consumers by asserting that the Respondent’s Website is an official website of Complainant.”
Finally Complainant argues that Respondent shows bad faith in providing seemingly false WHOIS information to the registrar when the disputed domain name was registered. See Park Place Entertainment Corporation v. Bowno, WIPO Case No. D.2001-1410 (WIPO Jan. 29, 2002) (providing erroneous and incomplete contact information constitutes bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures and sells clothing, footwear and accessories and uses the DANSKO mark. Complainant is the owner of a portfolio trademarks and service mark registrations for and including the DANSKE mark, including the following:
· United States registered trademark DANSKO, registration number 2,712,957, registered on the Principal Register on May 6, 2003 goods in international class 25;
· United States registered trademark DANSKO, registration number 3,265,194, registered on the Principal Register on July 17, 2007 goods in international class 25;
· United States registered trademark DANSKO, registration number 3,854,991, registered on the Principal Register on September 28, 2010 goods in international class 25;
· United States registered trademark DANSKO, registration number 4,229,847, registered on the Principal Register on October 23, 2012 for goods in international classes 3, 18, 25 and 35.
Complainant has an established Internet presence and maintains a website promoting its DANSKO branded goods at <www.dansko.com>.
The disputed domain name was registered on April 6, 2022 and resolves to a website that purports to display DANSKO branded footwear, which prominently displays Complainant’s mark and giving no indication that Respondent is not connected with Complainant, creates the impression that it is associated with or maintained by Complainant.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s Whois, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name for the purposes of this Complaint.
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”).
Complainant has provided uncontested evidence to prove that, on the balance of probabilities, it has rights in the DANSKO mark, established by its ownership of its portfolio of trademark and service mark registrations described above and extensive use of the mark in its clothing, footwear and accessories business.
The disputed domain name <dansozoccoli.co> consists of Complainant’s DANSKO mark in its entirety, in combination with the element “zoccoli” and the country code Top Level Domain (“ccTLD”) extension <.co>.
Complainant’s DANSKO mark is the initial, dominant, and only distinctive, element in the disputed domain name.
The element “zoccoli” which means “clogs” in Italian has no distinguishing character.
The ccTLD extension <.co> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s DANSKO mark.
This Panel finds therefore that disputed domain name <dansozoccoli.co> is confusingly similar to the DANSKO mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in disputed domain name <dansozoccoli.co> arguing that
· according to the WHOIS details, Respondent is named “Hieke Klein”, which supports Complainant’s assertion that Respondent is not commonly known as “Dansko” nor any variation thereof;
· using seemingly false WHOIS contact information,
· there presently is no evidence of any connection between respondent and the disputed domain name;
· Complainant has not authorized, licensed, or endorsed Respondent’s use of its DANSKO marks in the disputed domain name or otherwise;
· the website to which the disputed domain name resolves which is exhibited in the annex to the Complaint, is confusingly similar to Complainant’s official website and prominently features Complainant’s DANSKO registered trade mark;
· Respondent is using the imposter website purporting to offer identical footwear goods and takes particular care to mislead consumers by using an icon of the Italian flag on the infringing website, which comports with Respondent’s use of “zoccoli” in the disputed domain name;
· Respondent relies on indicia of online commerce to mislead consumers, employing elements such as the shopping cart icon and search bar on the infringing website;
· Respondent creates a false sense legitimacy that is nearly certain to confuse consumers into believing it is related to or affiliated with Complainant when it is not so related or affiliated;
· there is no evidence that Respondent is using the disputed domain name for a bona fide offering of goods or services or making any legitimate noncommercial or fair use of the disputed domain name, but rather, Respondent is using the disputed domain name to cause confusion with Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The Complainant has adduced uncontested evidence that it has acquired a substantial goodwill through long and extensive use of the DANSKO mark in its clothing, footwear and accessories business since as early as 1990, long before the disputed domain name was registered on April 6, 2022.
Complainant’s DANSKO mark is the initial, dominant and only distinguishing element in the disputed domain name.
The disputed domain name itself is a combination of Complainant’s mark and the word “zoccoli” meaning “clogs” in the Italian language, which in descriptive of Complainant’s goods.
It is therefore improbable that the disputed domain name was chosen for any reason other than to refer to Complainant’s mark and on the balance of probabilities the disputed domain name was chosen and registered in bad faith, with Complainant’s. mark in mind, in order to take predatory advantage of Complainant’s goodwill and reputation in its business and the DANSKO mark.
The uncontested evidence shows that the disputed domain name resolves to a website that prominently displays women’s sandals and clogs.
Given the similarity of the disputed domain name and Complainant’s DANSKO mark, that Respondent’s website is dedicated to footwear, that Complainant is a manufacturer of inter alia footwear, and has an established official website promoting its goods, this Panel finds that such use of the disputed domain name creates the false impression that the website is owned and maintained by Complainant.
On the balance of probabilities, given that there is no information on Respondent’s website that refers to Respondent, that Respondent is prominently using Complainant’s mark on the website without license or permission, that this Panel has found that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has not responded to the Complaint or contested Complainant’s submissions in any way, this Panel finds that Respondent is using the disputed domain name to attract Internet users who may be seeking Complainant’s products, to lure them to Respondent’s website and to confuse them into believing that Respondent’s website is owned, maintained or approved by Complainant.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the coupons purported to be offered by the Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danskozoccoli.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 9, 2022
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