WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steven Madden, Ltd. v. yingjie
Case No. D2012-2035
1. The Parties
The Complainant is Steven Madden, Ltd. of Long Island City, New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is yingjie of Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <maddenshoe.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 17, 2012. On October 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 17, 2012, the Complainant confirmed its request that English be the language of the proceeding in the amended Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 16, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 26, 2012. 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
The Complainant is a company incorporated in the State of Delaware in the United States of America and the owner of registrations in numerous jurisdictions for the trade marks STEVE MADDEN and MADDEN GIRLS (the “Trade Marks”).
The Respondent is an individual apparently based in China.
C. The Disputed Domain Name
The disputed domain name was registered on July 24, 2012.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is a designer, manufacturer and retailer of shoes and accessories under the Trade Marks. The Complainant has been advertising and selling its shoes and accessories under the Trade Marks for over 16 years. The Complainant’s total retail sales under the Trade Marks for the year 2010 amounted to more than USD 503 million.
The disputed domain name is confusingly similar to the Trade Marks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been linked to a website (the “Website”) which is a replica of the Complainant’s “www.stevemadden.com” website. The Respondent has registered and used the disputed domain name in order to attract Internet users to the Website and obtain a commercial advantage from the Complainant’s reputation in the Trade Marks. The Respondent is offering unauthorised, and possibly counterfeit, shoes under the Trade Marks on the Website. Furthermore, the operators of the Website have, in online communications with a representative of the Complainant, falsely claimed that the operators of the Website are agents of the Complainant.
For all of these reasons, the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Website is entirely in the English language;
(2) The Complainant is a business based in the US;
(3) The Complainant would be unfairly prejudiced and would incur additional costs if the proceeding was to be conducted in Chinese.
The Respondent did not file any submissions with respect to the language of the proceeding and did not file a Response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
It is apparent from the content of the Website that the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain name by over 16 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Trade Marks share the common element of the word “MADDEN”. It is this word “MADDEN” which is arguably the most distinctive element of both Trade Marks. The disputed domain name contains the word “MADDEN” in its entirety, together with the non-distinctive word “shoe”, which directly describes the products of the Complainant, as well as the products featured by the Respondent on the Website. The Panel concludes that the use of the generic word “shoe” does not serve to distinguish the disputed domain name from the Trade Marks in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) Before any notice to the Respondent of the dispute, the Respondent’s 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) The Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain name by many years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has clearly been used, without authorisation from the Complainant, in order to attract Internet users to the Website. Not only is the Website apparently a replica of the Complainant’s website, which reproduces, amongst other things, the Complainant’s STEVE MADDEN logo and photographs of the Complainant’s products, and offers for sale unauthorised (and possibly counterfeit) footwear under the Trade Marks, but the Respondent’s representatives have directly held the Respondent out as an agent of the Complainant, contrary to the fact.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
For the reasons specified above in the Panel’s findings under the second limb of the Policy, the Panel has no hesitation in making the requisite finding of bad faith.
At some stage following the filing of the Complaint, the Website has been taken down by the Respondent. As at the date of this Decision, the disputed domain name is not being used by the Respondent. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel finds that the third condition of paragraph 4(a) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <maddenshoe.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: December 10, 2012