WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECCO Sko A/S v. Ryan Mease
Case No. D2017-0224
1. The Parties
The Complainant is ECCO Sko A/S of Bredebro, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Ryan Mease of Kensington, Maryland, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <eccoskoudsalg.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2017. On February 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 9, 2017. 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 Danish manufacturer of footwear and, according to the Complaint, the second largest producer of casual footwear in the world. The Complainant was founded in 1963 and opened its first retail store in Denmark in 1982. The Complainant employs around 20,000 people worldwide. ECCO shoes are sold in more than 90 countries around the world, through more than 4,000 mono branded shops, as well as in department stores, multi branded stores and online marketplaces such as the Complainant's own at "shopeu.ecco.com".
The Complainant originally registered the name ECCO for footwear as early as in 1981. Today, the Complainant's trademark ECCO is registered in numerous jurisdictions, including in the US, Australia, the European Union and China, see for example US trademark registrations Nos. 3097284 ECCO, 3155456 ECCO, 3090429 ECCO, 2331090 ECCO, 2400426 ECCO, 1753970 ECCO, 1935123 ECCO and 3099622 ECCO.
According to the Complainant, the Respondent registered the Domain Name on May 23, 2014 and is currently being used to advertise the sale of ECCO shoes or counterfeited ECCO products.
5. Parties' Contentions
The Complainant provides trademark registrations, and submits that the ECCO trademark is well known. The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademarks. The Domain Name incorporates the whole of the Complainant's ECCO trademark. ECCO has a high degree of distinctiveness and is well known due to international use. The Domain Name merely combines the Complainant's trademark with the generic term "skoudsalg" which is the Danish word for "shoe sale".
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the ECCO mark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. There is no evidence that the Respondent owns any service marks or trademarks that reflect the Domain Name. The Complainant's registration and use of its trademark ECCO predates the Respondent's registration of the Domain Name by several years. On the website, the Respondent offers a large quantity of presumably counterfeit products. In this regard, the Complainant has annexed several emails from customers who have purchased goods from the website under the Domain Name thinking they were genuine shoes from the Complainant.
The Complainant argues that the Respondent's reasons for the registration of the Domain Name was to attract Internet users by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website under the Domain Name. The Respondent takes advantage of the reputation of the Complainant's trademarks to attract Internet users and potential customers to the website under the Domain Name, when the Internet users are searching for the Complainant's products.
As to bad faith, the Complainant argues, inter alia, that the Respondent must have been aware of the Complainant's trademark rights at the time of the registration of the Domain Name. The Domain Name resolves to a website where the Complainant's trademarks are misappropriated and prima facie counterfeit ECCO branded products are promoted for sale. It is also an indication of bad faith that the Respondent has not replied to the Complainant's allegations.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark ECCO.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant's trademark ECCO, with the generic term "skoudsalg" added, which means "shoe sale" in Danish. The addition does not dispel any confusing similarity.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services.
The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name.
Taking into account that the Respondent makes unauthorized use of the Complainant's trademark, and the Domain Name resolves to a website where the Complainant's figurative trademarks are published and most likely counterfeited ECCO products are for sale, the Panel considers that the Respondent uses the Domain Name to misrepresent that the Domain Name is connected and/or associated with the Complainant. The Panel notes there are otherwise no disclaimers or other information available on the website.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant's trademark and its business when the Respondent registered the Domain Name. It is likely that the Respondent's intention for registering the Domain Name has been to use it for financial gain, evidenced by the fact that the Domain Name resolves to a webpage that seems to sell counterfeited ECCO products.
The Panel finds that on the balance of probabilities the Respondent registered and has used the Domain Name for commercial gain to redirect Internet users to a website offering counterfeited ECCO products, with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. This finding is supported by the fact that the Respondent has not responded to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
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, <eccoskoudsalg.com>, be transferred to the Complainant.
Date: March 13, 2017