WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steven Madden, Ltd. v. Zhang Xiaoli
Case No. D2013-2049
1. The Parties
The Complainant is Steven Madden, Ltd. of New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Zhang Xiaoli of Fuzhou, Fujian Province, China.
2. The Domain Name and Registrar
The disputed domain name <stevemaddennjp.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 proceedings commenced on December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Masato Dogauchi as the sole panelist in this matter on January 13, 2014. 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
Whereas the Respondent has not submitted any contentions, the followings are found to be the factual background of this case.
The Complainant is a company designing, manufacturing and selling shoes, boots and accessories under the trademarks including the words STEVE MADDEN, among many others. Some of these trademarks were registered in the United States initially in 1996 and 1997. The Complainant maintains a website selling its products located at “www.stevemadden.com”.
According to the WhoIs database, the Respondent is Zhang Xiaoli, an individual with an address in Fuzhou, Fujian Province, China.
This dispute concerns the disputed domain name identified <stevemaddennjp.com>, registered by the Respondent on November 11, 2013.
5. Parties’ Contentions
The Complainant asserts as follows:
The Complainant’s website selling shoes, boots and accessories located at “www.stevemadden.com” has received an average of 400,500 unique visitors per month over the past 13 months. The Complainant’s net sales for 2012 totaled more than 1.22 billion USD. With a staff of over 2,650 employees and a position on the Nasdaq Exchange, the Complainant is a worldwide distinguished brand and retailer.
The Complainant is a leading retailer of footwear fashions, as well as America’s most successful shoe designer. The Complainant (and its subsidiaries) designs, sources, markets & retails fashion forward footwear for women, men and children.
The Complainant’s trademark rights in the STEVE MADDEN trademark date back over 16 years. The Complainant has spent millions of dollars in advertisement and promotion of the trademark, on the Internet through its website and in many other advertising mediums. Based on its United States federal trademark registrations and worldwide trademark registrations and extensive use, the Complainant owns the exclusive right to use the trademark in connection with shoes and accessories and in connection with online retail services.
Long after the Complainant established its rights in and to the trademark STEVE MADDEN, the Respondent registered and began using the disputed domain name incorporating the Complainant’s trademark STEVE MADDEN in connection with the Respondent’s use of the disputed domain name.
The Respondent has designed a website using the Complainant’s trademark STEVE MADDEN and is selling unauthorized Steve Madden-branded shoes or possibly counterfeited Steve Madden-branded goods.
The Respondent’s sole choice in using the disputed domain name is to mislead the public into believing that the Respondent’s business is associated with and/or authorized by the Complainant, which is not true.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any submission in this case, the following decision is rendered on a basis of the facts found by the submission from the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is found that the Complainant has rights in the trademarks including the words STEVE MADDEN for more than 16 years.
The difference between the Complainant’s trademark and the disputed domain name is that the latter had three additional letters at the end of the spelling “njp”. The letter “jp” is ccTLD (country code Top Level Domain) of Japan and is generally known as the abbreviation of “Japan” in the Internet age. As the information in the Respondent’s website using the disputed domain name is written in Japanese, it is natural for many people to consider that the “jp” in the suffix of the disputed domain name indicates Japan.
Accordingly, the geographical indication “jp” cannot be considered as sufficient to distinguish the disputed domain name from the Complainant’s trademark. Such geographic indication is apt to induce confusion among Internet users as to the source and origin of the products.
The remaining difference is “n”. The words “madden” and “maddenn” are very similar. In addition to this similarity, both the Complainant’s trademark and the disputed domain name have identical word “steve” at the beginning.
Having considered these differences, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
It is not found that the Respondent has any rights or legitimate interests in respect of the dispute domain name. The Panel finds that the Complainant has made a prima facie showing under the second element of the Policy and the Respondent has not rebutted this showing or otherwise submitted any evidence to show its interests.
In the circumstances and since the Respondent is totally absent from these proceedings, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) of the Policy is accordingly satisfied.
C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant’s trademark, it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trademark STEVE MADDEN at the time of the registration.
It is found that the Respondent is using the disputed domain name in order to generate traffic to an online shop maintained in Japanese in which is the Complainant’s trademark is shown and many items including shoes are displayed for sale. By doing this, the Respondent is using the Complainant’s trademark and misleading Internet users to a websites presumably related to the Respondent.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(a)(iii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be 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 <stevemaddennjp.com> be transferred to the Complainant.
Date: January 20, 2014