DECISION
DC Shoes, LLC fka DC Shoes, Inc. v. Petra G. Himes
Claim Number: FA2506002162046
PARTIES
Complainant is DC Shoes, LLC fka DC Shoes, Inc. ("Complainant"), New York, USA, represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Petra G. Himes ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dcshoesstores.com>, registered with Paknic (Private) Limited.
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 23, 2025; Forum received payment on June 23, 2025.
On June 25, 2025, Paknic (Private) Limited confirmed by e-mail to Forum that the <dcshoesstores.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (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 June 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2025 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@dcshoesstores.com. Also on June 25, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 16, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions.
1. The Complainant is a United States company engaged in the provision of skateboarding shoes, action sportswear and related goods and services and has been so engaged since at least 1994.
2. The Complainant provides its goods and services under the trademark for DC SHOES. The evidence will establish that the Complainant has acquired registered trademark rights in the DC SHOES trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 2,340,040, registered on April 11, 2000 and numerous other trademarks for DC SHOES and derivatives registered domestically and internationally (collectively "the DC SHOES trademark").
3. The Complainant uses the DC SHOES trademark to offer its goods and services and has done so since at least 1994.
4. The DC SHOES trademark is a well-known mark, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
5. As well as its trademark, the Complainant has registered the domain name <dcshoes.com> that it uses in its business and in particular for its website at www.dcshoes.com, where it markets its aforesaid products under the DC SHOES trademark.
6. The Respondent registered the <dcshoesstores.com> domain name on September 1, 2024 ("the disputed domain name") well after the Complainant established its aforesaid trademark rights.
7. The disputed domain name embodies, without the consent of the Complainant, the DC SHOES trademark, with the deletion of the gap between the DC and SHOES of the trademark, the addition of the word "stores" and the addition of the generic Top Level Domain ".com".
8. The disputed domain name is confusingly similar to the DC SHOES trademark.
9. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:
(a) the Complainant has not licensed or permitted the Respondent to use the DC SHOES trademark in a domain name or anywhere else;
(b) the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i);
(c) the Respondent has not used the disputed domain name for a legitimate, non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii);
(d) the Respondent has used the domain name to operate a counterfeit website which is unauthorized and calculated to mislead internet users to believe that it is a genuine and authorized website of the Complainant which it is not;
(e) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); and
(f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.
10. The Respondent has registered and used the disputed domain name in bad faith. That is so because:
(a) at the time the Respondent registered the disputed domain name, it had actual knowledge of the Complainant, its business and its DC SHOES trademark which has been used by the Complainant since at least 1994;
(b) there was a gap of several years between the registration of the DC SHOES trademark and the Respondent's registration of the disputed domain name;
(c) the Respondent illegally used on its website the Complainant's copyright photos and text to pass itself off as the Complainant and to drive traffic to the Respondent's site;
(d) the Respondent has sought to impersonate the Complainant to sell competing and counterfeit products;
(e) the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii) by diverting internet users away from the Complainant's official and genuine website and to the Respondent's offending website;
(f) the Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv);
(g) the Respondent has used a privacy service to mask its identity; and
(h) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.
The evidence will therefore establish that the Complainant has been able to make out all of the grounds it must establish and that it is entitled to the relief that it seeks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
2. The Complainant provides its goods and services under the trademark for DC SHOES. The evidence has established that the Complainant has acquired registered trademark rights in the DC SHOES trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 2,340,040, registered on April 11, 2000 and numerous other trademarks for DC SHOES and derivatives registered domestically and internationally (collectively "the DC SHOES trademark").
3. The Respondent registered the <dcshoesstores.com> domain name on September 1, 2024 ("the disputed domain name") well after the Complainant established its aforesaid trademark rights.
4. The Respondent has caused the disputed domain name to resolve to a website that infringes and tarnishes the Complainant's trademark, passes itself off as and impersonates the Complainant, uses the DC SHOES trademark to offer products purporting to be the Complainant's genuine products, misleads internet users and seeks to disrupt the Complainant's business and generate confusion.
5. By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the DC SHOES trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.
6. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant provides its goods and services under the trademark for DC SHOES. The evidence has established that the Complainant has acquired registered trademark rights in the DC SHOES trademark as a consequence of its registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 2,340,040, registered on April 11, 2000 and numerous other trademarks for DC SHOES and derivatives registered domestically and internationally (collectively "the DC SHOES trademark").
All of the aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.
The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's DC SHOES trademark. The Panel finds that the disputed domain name is confusingly similar to the DC SHOES trademark for the following reasons. The domain name embodies, without the consent of the Complainant, the DC SHOES trademark, with the deletion of the gap between the DC and SHOES of the trademark, the addition of the word "stores" and the addition of the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the DC SHOES trademark and the well-known goods and services offered under it, simply because the domain name contains the trademark, making the domain name similar to the trademark and confusingly so, as it raises the question whether the domain name is an official and genuine domain name of the Complainant or not. The deletion of the gap between DC and SHOES is too insignificant to have any practical effect. The addition of the word "stores" has the effect that internet users would read it as invoking the DC SHOES trademark and showing the stores where shoes under the DC SHOES mark may be purchased. The addition of the generic Top Level Domain ".com" is ignored in making the comparison because all domain names must have such an extension.
Applying these well-accepted principles, the Panel therefore finds that the disputed domain name is confusingly similar to the DC SHOES trademark under Policy ¶ 4(a)(i). It might also be noted here that not only is the domain name confusingly similar to the trademark, but it is virtually identical and confusingly similar to the Complainant's official domain name <dcshoes.com> which must have caused immense confusion to at least some internet users looking for the Complainant on the internet.
The Complainant has thus made out the first of the three elements that it must establish under the Policy.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely:
(a) the Complainant has not licensed or permitted the Respondent to use the DC SHOES trademark in a domain name or anywhere else; there is no evidence of any such license or permission having been granted and of course it would be extremely unlikely that any such license or permission would be granted in the circumstances revealed by the evidence; also, the absence of any such license or permission negates any possibility that the domain name could have been registered by the Respondent with any form of consent by the Complainant;
(b) the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); the evidence in Annex 5 shows that the Respondent has taken the distinctive trademark of the Complainant, used it in its domain name to pretend that it will lead to stores where genuine DC SHOES products are available, claimed that the products on display are DC SHOES products that may be bought at the website and has also used it to advertise the availability of the Complainant's products, all illegally, because it uses the Complainant's trademark to do so and without any sort of permission;
(c) the Respondent has not used the disputed domain name for a legitimate, non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate in what the Respondent has done; it is not legitimate to steal another party's trademark or to use it to set up a fraudulent website and give the false impression that the products for sale on the website are being offered lawfully when they are not; nor is it conceivably non-commercial, as this is clearly being done for money, which is commercial; and nor is it fair, either to the Complainant or internet users in general who might well be misled by the website;
(d) the Respondent has used the domain name to operate a counterfeit website offering what are almost certainly counterfeit goods, which is unauthorized and calculated to mislead internet users to believe that it is a genuine and authorized website of the Complainant which it is not; this has clearly been established by the evidence which has already been explained;
(e) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name and there is no evidence that is known by any name other than its own; and
(f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.
The Complainant has thus made out a persuasive and detailed case on the evidence for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.
All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.
The Complainant has therefore made out the second of the three elements it must establish under the Policy
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
In view of the evidence discussed above, which is equally as applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat here, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration of the domain name and has continued in that conduct and with the same intention, after its registration; the registration was clearly an attempt to use the Complainant's trademark improperly and without any sort of permission, to offer sales of shoes and related goods and services under the imprimatur of the Complainant's trademark and to give the impression that they were genuine products of the Complainant and were being sold by the Complainant, which was deceptive, as the goods offered were almost certainly counterfeit; it is equally clear from the evidence that the Respondent has used the domain name in bad faith in the deception of internet users, amply demonstrated by the evidence referred to above in Annex 5. In particular, it is clear from the evidence that, as the Complainant has submitted:
(a) at the time the Respondent registered the disputed domain name, it had actual knowledge of the Complainant, its business and its DC SHOES trademark which has been used by the Complainant since at least 1994; the evidence is that the Complainant and its trademark are well-known and the Complainant is renowned as the supplier of the products that the Respondent now purports to sell under the guise of being authorized to do so by the Complainant; moreover, the Respondent was clearly impersonating the Complainant and purporting to sell its actual products; finally, the Respondent could not have gone as far as it did in perpetrating its subterfuge, had it not had actual knowledge of the Complainant and its trademark;
(b) there was a gap of several years between the registration of the DC SHOES trademark and the Respondent's registration and use of the disputed domain name; it is clear from this gap that the Respondent was motivated by the fact that there was a famous brand of shoes on the market that it could try to copy and to mislead buyers to believe that what it would offer for sale were genuine products of the Complainant when they were not and when the Respondent must have known that they were not;
(c) the Respondent illegally used on its website the Complainant's copyright photographs and wording to pass itself off as the Complainant and to drive traffic to its own website; the whole get-up of the Respondent's website was designed to give the false impression that it was a genuine site of the Complainant when it was not and when the Respondent knew that it was not; this is classic bad faith;
(d) the Respondent has sought to impersonate the Complainant to sell competing and counterfeit products; at the basis of the Respondent's subterfuge was its attempt to give the impression that it was genuine, when it clearly was not; this, again, is clearly bad faith;
(e) the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii) by diverting internet users away from the Complainant's official and genuine website and to the Respondent's offending website; clearly, the Respondent's modus operandi involved trying to induce internet users to make less use of the Complainant's official and genuine offerings and more use of the Respondent's own purported but counterfeit offerings, which must have disrupted the Complainant's business;
(f) the Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv); the Respondent clearly wanted internet users to think that it was the Complainant or was authorized by it, which it was not;
(g) the Respondent has used a privacy services to mask its identity; clearly, the Respondent wanted to conceal its identity because what it was engaged in was illegal, showing again its brazen acts of bad faith; and
(h) all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the DC SHOES trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, its customers and internet users in general, passed itself of as the Complainant, infringed and tarnished the Complainant's trademark, tried to set up a purported competing source of products and sought to mislead internet users to believe that the products offered on its website were genuine and authorized products of the Complainant, which they were not.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has also cited several prior UDRP decisions that support all of its contentions.
The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dcshoesstores.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: July 17, 2025
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