Dansko, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2207002004874
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 <dansko-netherlands.com>, <dansko-de.com>, <danskoclogsireland.com>, <danskoat.com>, <danskosandali-it.com>, <danskodk.com>, and <danskoschuhe-ch.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.
Ho-Hyun Nahm, Esq. 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 <dansko-netherlands.com>, <dansko-de.com>, <danskoclogsireland.com>, <danskoat.com>, <danskosandali-it.com>, <danskodk.com>, and <danskoschuhe-ch.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 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@dansko-netherlands.com, postmaster@dansko-de.com, postmaster@danskoclogsireland.com, postmaster@danskoat.com, postmaster@danskosandali-it.com, postmaster@danskodk.com, postmaster@danskoschuhe-ch.com. Also on July 27, 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 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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 has alleged 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.” Complainant contends that the disputed domain names resolve to nearly identical web pages and were registered with the same registrar on the same date.
The Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Respondents are collectively referred to as ‘Respondent.’
A. Complainant
i) Complainant is a Pennsylvania-based global footwear company. Complainant claims rights in the DANSKO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,712,957, registered May 6, 2003). The disputed domain names <dansko-netherlands.com>, <dansko-de.com>, <danskoclogsireland.com>, <danskoat.com>, <danskosandali-it.com>, <danskodk.com>, and <danskoschuhe-ch.com> (hereafter referred to collectively as “the disputed domain names”) are confusingly similar because each wholly incorporates Complainant’s registered mark and differs through the addition of geographic, generic, or descriptive terms as well as the generic top-level domain (“gTLD”) “.com.”
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the DANSKO mark in any way. Additionally, Respondent fails to use the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant and purportedly offer Complainant’s products.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to commercially benefit by creating a likelihood of confusion and purportedly offering Complainant’s products. Respondent had actual and constructive knowledge of Complainant’s rights in the DANSKO mark. Respondent registered the disputed domain names using incomplete WHOIS information.
B. Respondent
Respondent did not submit a response in this proceeding.
1. All of the disputed domain names were registered on May 14, 2022.
2. Complainant has established rights in the DANSKO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,712,957, registered May 6, 2003).
3. The disputed domain names resolve to websites mimicking Complainant’s own website and purporting to offer Complainant’s products.
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 claims rights in the DANSKO mark through its registration with the USPTO (e.g., Reg. No. 2,712,957, registered May 6, 2003). Registration of a mark with a national trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has established rights in the DANSKO mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain names are confusingly similar to Complainant’s mark because they wholly incorporate Complainant’s mark differing only through the addition of various geographic terms in many, and adds various descriptive and generic terms in others before also adding the gTLD “.com.” The addition of a geographic, generic, or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); 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.”).
The Panel notes that the name <dansko-netherlands.com> adds the term “netherlands”; the name <dansko-de.com> adds the abbreviation for Germany “de”; the name <danskoclogsireland.com> adds the terms “clogs” and “ireland"; the name <danskoat.com> adds the abbreviation for Austria “at”; the name <danskosandali-it.com> adds the term “sandali” (meaning “sandals” in Italian) and the abbreviation for Italy “it”; the name <danskodk.com> adds the abbreviation for Denmark “dk”; the name <danskoschuhe-ch.com> adds the term “schuhe” (meaning “shoes” in German) and the abbreviation for Switzerland “ch” to Complainant’s mark. Therefore, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the DANSKO mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain names does not indicate that Respondent is known by the disputed domain names. The Respondent is known as “Client Care / Web Commerce Communications Limited.” There is nothing in records to rebut Complainant’s argument that Respondent was not given rights to use the DANSKO mark nor was commonly known by the disputed domain names.
Complainant further argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent uses disputed domain names to pass off as Complainant. Using a disputed domain name to pass off as a Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant has provided the Panel with screenshots of the disputed domains mimicking Complainant’s own website and purporting to offer Complainant’s products. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing websites for commercial gain. Where a respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously noted, Complainant provides screenshots showing the disputed domain names being used to pass off as Complainant and purportedly offer Complainant’s products. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dansko-netherlands.com>, <dansko-de.com>, <danskoclogsireland.com>, <danskoat.com>, <danskosandali-it.com>, <danskodk.com>, and <danskoschuhe-ch.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 26, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page