WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp.

Case No. D2018-2474

1. The Parties

The Complainant is Steven Madden of Long Island City, New York, United States of America (“United States”), represented by Hunton Andrews Kurth LLP, United States.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <stevenmadden.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2018, 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 November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on December 17, 2018. 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

Founded in 1990, the Complainant is a publicly-traded fashion design company that provides a wide range of footwear, clothing, accessories and other goods. Its products are marketed internationally to men, women, and children. The name of the Complainant reflects the name of its founder, Mr. Steven Madden.

The Complainant owns registrations for the STEVE MADDEN trademark, which has been registered in various jurisdictions around the world, including:

- United States trademark STEVE MADDEN, registration number 2012115, registered on October 29, 1996; and

- European Union Trade Mark STEVE MADDEN, registration number 010206415, registered on January 18, 2012; and

The Complainant also owns United States trademark STEVEN BY STEVE MADDEN, registration number 3389026, registered on February 26, 2008.

The disputed domain name was first registered on April 18, 2000. At some point, the initial registration lapsed, and appears to have been deleted. The disputed domain name was subsequently re-registered on July 2, 2004. The disputed domain name is registered in the name of a privacy service. The disputed domain name redirects to a parking page displaying pay­per-click links at “www.lebelleshoes.com”. The pay­per-click links make reference to the Complainant, and otherwise relate to footwear, directing Internet users to third-party websites that advertise goods in competition with those of the Complainant.

In October 2017, the Complainant’s counsel sent a cease-and-desist letter (by email) to the Respondent. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its STEVE MADDEN and STEVEN BY STEVE MADDEN trademarks. The Complainant states that the only difference between the disputed domain name and the Complainant’s trademarks is the addition of the letter “n”. The Complainant further argues that Internet users could easily mistype “stevemadden.com” as “stevenmadden.com”, which the Complainant argues is an attempt at “typosquatting”. The Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing factor.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not authorized to make use of the Complainant’s trademarks in any way, including in domain names. The Complainant argues that the disputed domain name is not used for a bona fide offering of goods or services, that the Respondent has no rights in any registered trademarks for “STEVE MADDEN” or “STEVEN MADDEN” or any other similar terms or combinations of the foregoing, that the Respondent has never been commonly known by the disputed domain name, and that the Respondent’s use of the disputed domain name is neither legitimate nor fair.

The Complainant submits that the Respondent registered the disputed domain name with full knowledge of the Complainant’s STEVE MADDEN trademarks and corresponding domain names. The Complainant states that its registered trademarks date back to 1996, and that its domain name <stevemadden.com> was registered in 1998, long before the registration of the disputed domain name in 2004. The Complainant further states that the registrant profile of the disputed domain name has changed constantly since its original registration in 2004. The Complainant states that based on the fame of its STEVE MADDEN trademarks, any claim by the Respondent that it was unaware of the Complainant’s trademarks at the time of registration would be meritless.

The Complainant states that the disputed domain name redirects to the website “www.lebelleshoes.com” in an attempt to confuse Internet users into thinking that the Respondent is the Complainant, or is associated with the Complainant. The Complainant states that the links appearing on the website to which the disputed domain name redirects are part of a pay-per-click advertising scheme that targets the Complainant’s customers with links that they would be interested in, forwarding Internet users to unrelated websites, for which the Respondent receives referral fees. The Complainant further asserts that the disputed domain name may also be used as an instrument in a phishing scam wherein Internet users are led to believe that they are purchasing footwear from the Complainant, and may provide the Respondent with their personal financial data. Based on the above, the Complainant states that the disputed domain name was registered and used in bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, the Complainant must prove on the balance of probabilities that it has satisfied the requirement of paragraph 4(a) of the Policy, as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the STEVE MADDEN and STEVEN BY STEVE MADDEN trademarks by virtue of their registration and use, as outlined in the factual background section above.

The disputed domain name incorporates the Complainant’s STEVE MADDEN trademark in its entirety, altered only by the addition of a single letter “n” between the elements “steve” and “madden”. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel considers that to be the case here, where “Steven” is an obvious variation on the spelling of the name “Steve”, which forms part of the Complainant’s trademark. As such, the Panel considers the disputed domain name to be confusingly similar to the Complainant’s STEVE MADDEN trademark. The Panel further considers the disputed domain name to be confusingly similar to the Complainant’s STEVEN BY STEVE MADDEN trademark as it wholly incorporates the first and last elements of the trademark.

The gTLD “.com”, being a technical requirement for registration, may be disregarded in the present case. See WIPO Overview 3.0, section 1.11.1.

For reasons set out above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any of which may demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to you [the respondent] 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 tarnish the trademark or service mark at issue.

The Complainant states that it has never consented to the Respondent’s use of the STEVE MADDEN trademarks, and that there is no affiliation or connection between the Parties.

The Complainant argues that the Respondent is not making a bona fide use of the disputed domain name. Rather, the Respondent is using the disputed domain name to redirect Internet users to a website that displays sponsored links to third-party goods and services. In this regard, the Complainant states that the use of the disputed domain name in connection with a website displaying pay-per-click links cannot be considered bona fide where such links capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (citing WIPO Overview 3.0, section 2.9). The Complainant’s evidence regarding the use of the disputed domain name corroborates the Complainant’s assertions in this regard.

The Complainant further asserts that, to its knowledge, the Respondent does not have any proprietary rights in any registered trademarks for “STEVE MADDEN” or “STEVEN MADDEN” or any similar terms or phrases. The Panel notes in this regard that the disputed domain name is composed of elements that comprise a personal name, i.e., “Steven Madden”, and that a respondent may assert rights in a domain name on the basis that it is commonly known by the domain name. See paragraph 4(c)(ii) of the Policy; see also CKL Holdings N.V. v. Paul Flammea, WIPO Case No. D2016-1340. In the present case, however, the Respondent has not come forward to assert that it is known by the name “Steven Madden”, “Steve N. Madden”, or any similar name resembling the disputed domain name. In fact, the identity of the registrant of the disputed domain name is unknown, having been registered using a privacy service.

Finally, the Complainant asserts that there is no other basis on which the Respondent could claim any rights or legitimate interests in the disputed domain name, noting that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel accepts that use of the disputed domain name in connection with a pay-per-click parking page does not amount to bona fide use of a domain name within the meaning of paragraph 4(c)(iii) of the Policy.

Based on the Complainant’s assertions and supporting evidence, as outlined above, the Panel finds that the Complainant had made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, having been duly notified by the Center of the proceeding, has failed to come forward with any reply to rebut the Complainant’s prima facie case, and the Panel finds no other basis on which the Respondent could be said to have any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant, who has provided historical WhoIs records for the disputed domain name dating back to its initial registration in 2000, asserts that the disputed domain name was acquired by the Respondent in 2017. This statement is not clearly supported by the evidence provided by the Complainant. Rather the disputed domain name was first registered on April 18, 2000 by an individual. The registration appears to have lapsed and been deleted, and subsequently re-registered in the name of a privacy service on July 2, 2004. From 2004 to 2015, the disputed domain name was registered with the registrars Moniker Online Services LLC and Internet.bs Corp. In early 2015, the disputed domain name was registered with the current Registrar, TLD Registrar Solutions Ltd. The Complainant’s evidence also indicates that the disputed domain name redirected to a parking page displaying sponsored links at “www.lebelleshoes.com” as early as April 19, 2014. Noting that the disputed domain name has been registered in the name of various privacy services since 2004, with at least two different registrars, and that since April 2014 there has been no change in the use of the disputed domain name despite changes in registrant information, it is difficult to ascertain exactly when the Respondent became the registrant of the disputed domain name. Nevertheless, even if the Panel were to adopt the view that the disputed domain name was registered by the Respondent as early as 2004, it would not ultimately affect the Panel’s findings under this element.

The Complainant was founded in 1990 and has been publicly traded since December 1993. By 2004, the Complainant had registered several United States trademark registrations for its STEVE MADDEN trademark, and had achieved a high degree of notoriety. Noting that the Respondent has not come forward to assert any rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii) of the Policy, the Panel finds that the Respondent’s registration of the disputed domain name was not a coincidence, and infers that the Respondent registered the disputed domain name with the Complainant and its trademarks in mind. This inference is supported by the use to which the disputed domain name has been put, namely to redirect to a parking page at “www.lebelleshoes.com” displaying pay-per-click links to the Complainant and competitors of the Complainant. Whether this was an attempt to capture Internet traffic seeking the Complainant by typosquatting (the letters “n” and “m” being adjacent on a standard QWERTY keyboard), or by registering a domain name reflecting the Complainant’s mark and also the name of the Complainant’s founder is not clear. Nevertheless, the evidence does suggest that the Respondent, who is unaffiliated with the Complainant, registered the disputed domain name in bad faith in order to take advantage of the reputation and goodwill associated with the Complainant’s trademarks.

Further to the above, the Panel finds that the Respondent has used the disputed domain name in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s STEVE MADDEN trademark, as to the source, sponsorship, affiliation, or endorsement of its website. Such use amounts to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

In the circumstances of the present case, the Panel further finds the Respondent’s use of a privacy service to mask its identity together with the Respondent’s failure to reply to the Complainant’s cease-and-desist letter to be further evidence of the Respondent’s bad faith. In light of the Panel’s findings above, the Panel deems it unnecessary to further consider the Complainant’s assertions that the disputed domain name was registered as part of a fraudulent scheme.

7. Decision

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 <stevenmadden.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: December 24, 2018