WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dansko, LLC v. Gery Lee
Case No. D2011-1300
1. The Parties
Complainant is Dansko, LLC of West Grove, Pennsylvania, United States of America represented by Cozen O'Connor, United States of America.
Respondent is Gery Lee of New York, New York, United States of America
2. The Domain Name and Registrar
The domain name, <sale-dansko.com>, is registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 28, 2011. On July 29, 2011, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain name. On July 31, 2011, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2011.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 29, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns United States federal trademark registrations for several DANSKO marks for footwear. The earliest registration issued in 2003 and claims a date of first use of 1991. It also owns and operates websites under the domain names <dansko.com> and <danskooutlet.com>.
The domain name was registered in July 2010. Prior to the filing of the Complaint, the domain name was used for a website that offered DANSKO footwear for sale. Currently, there does not appear to be an active website associated with the domain name.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant is a well-known footwear company that was first established in 1990. It sells a variety of footwear products under the DANSKO mark, including the number one selling brand of clogs in the United States.
Complainant owns several United States federal trademark registrations for DANSKO marks for footwear, including: DANSKO, DANSKO and design, DANSKO@WORK. The earliest of these (for DANSKO and DANSKO and design) were used as early as 1991 and were registered in 2003. Complainant also operates its corporate websites under the domain names <dansko.com> and <danskooutlet.com>.
The <sale-dansko.com> domain name incorporates the DANSKO mark in its entirety.
2. Rights or Legitimate Interests
Respondent is not affiliated with Complainant and no evidence suggests that Respondent has registered the domain name to advance any legitimate interests or to make a bona fide offering of goods or services.
The address provided by Respondent in the registration is fictitious. Because the “www.sale-dansko.com” website does not provide contact information, Respondent cannot claim to be known by the domain name or a similar name.
Respondent has used the domain name in connection with a website that is a nearly identical replica of Complainant’s corporate website at “www.dansko.com”, and that purports to allow visitors to purchase DANSKO footwear. Use of the domain name in that fashion does not give legitimate rights or interests in the domain name.
3. Registered and Used in Bad Faith
Respondent adopted and used the <sale-dansko.com> domain name in bad faith.
Internet users seeking Complainant’s products or services who type in the domain name were directed to a website that, until recently, contained no independent content of its own and was a nearly identical replica of Complainant’s website. The content was removed by the web hosting company after Complainant objected.
A webpage affiliated with the domain name, until recently, located at “www.blog.sale-dansko.com” contained text copied from other websites that describe DANSKO footwear. The affiliated page also included a link labeled “shop online,” which linked to the website at “www.sale-dansko.com”.
Respondent’s use of the domain name is likely to give rise to confusion as to an association, affiliation, or sponsorship between Complainant and Respondent.
On May 31, 2011, Complainant sent Respondent a letter in which it notified Respondent of Complainant’s rights and requested that Respondent transfer the domain name <sale-dansko.com> to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to the domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the mark DANSKO by virtue of the evidence of its United States federal trademark registrations.
Respondent’s domain name is not identical to Complainant’s mark.
The Panel is of the view that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark.
The Panel agrees that the inclusion of the generic term “sale” before the term “dansko” does not effectively differentiate or distinguish the domain name from Complainant’s mark, which remains the dominant portion of the domain name (the presence or absence of spaces and the addition of the generic top-level domain “.com” is not relevant for purposes of this comparison).
The Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no reason to believe, from the WhoIs record or otherwise, that Respondent is known by the domain name1. There is also no evidence that Respondent is making a noncommercial use of the domain name. Instead, the evidence suggests that Respondent was using the domain name to sell DANSKO shoes.
Consistent with the consensus view, the Panel finds that there are circumstances under which a reseller may establish a right or legitimate interest in a domain name that contains the trademark of the goods that it is reselling. See WIPO Overview 2.0, paragraph 2.3. Those circumstances generally include: actually offering the goods or services at issue, using the site to sell only the trademarked goods, and disclosing on the site the registrant’s relationship with the trademark owner. Like some of the other panels that subscribe to this view, the Panel believes that even unauthorized resellers may be able to establish a right or legitimate interest in this fashion. While the printout of Respondent’s website appears to offer actual DANSKO products and does not appear to offer other goods and services, it does not disclose Respondent’s relationship (or lack of relationship) with Complainant.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(iii) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark predate Respondent’s registration of the domain name. Given that Respondent offered Complainant’s products on its website, Respondent had actual knowledge of Complainant’s trademark rights and may have intended visitors to believe that the website was that of Complainant.2 It also seems that Respondent used a fictitious address: “zone12, new york city, new york, New York 14620.” “zone12” does not appear to be a legitimate street address and the zip code provided is that of Rochester, New York and Brighton, New York, rather than New York City.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sale-dansko.com> be transferred to Complainant.
Debra J. Stanek
Dated: September 12, 2011
1 The Panel does not, however, agree with Complainant’s position that Respondent cannot claim to be known by the domain name (or a variant) because no contact information appeared on the “www.dansko.com” website and the registration appears to use a fictitious address. The existence of such contact information might be relevant, but its absence does not, in and of itself, mean that Respondent is not known by the domain name (or variant). In this Panel’s view, use of a fictitious address casts some doubt on Respondent’s motives, but it is of little probative value in assessing how Respondent is known.
2 The Complaint asserts that Respondent’s website was “a nearly identical replica” of Complainant’s corporate website, but provided only a printout from Respondent’s website and not its own, annex I of the Complaint. The Panel undertook a limited review of Complainant’s website at “www.dansko.com”, see WIPO Panel Overview 2.0, paragraph 4.5 (panel may undertake limited factual research into matters of public record). At the time of the Panel’s review, the pages were similar but not identical.