WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euro Sko Norge AS v. Whoisguard Inc. / Shier Dede, Shier Dede
Case No. D2020-0194
1. The Parties
The Complainant is Euro Sko Norge AS, Norway, represented by Zacco Norway AS, Norway.
The Respondent is Whoisguard Inc., Panama / Shier Dede, Shier Dede, Germany.
2. The Domain Name and Registrar
The disputed domain name <eurosko.net> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2020, 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. The Center sent an email communication to the Complainant on January 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 28, 2020.
The Center verified that the Complaint together with the amendment to 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 January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 24, 2020. 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 one of Scandinavia’s largest shoe chains, offering its products online and in retail stores in multiple countries. The Complainant owns the mark EUROSKO, which is the subject of trademark registrations, including Danish Trademark No. VR 2014 00175, issued on January 24, 2014. The Respondent registered the disputed domain name on October 20, 2016. As of the date of the Complaint, the disputed domain name does not point to an active website. But the Respondent has in the past used the disputed domain name to set up and run a website selling counterfeit merchandise, “posing” as the Eurosko brand.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark EUROSKO in its entirety.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark EUROSKO.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts that it has granted no license or authorization of any other kind to the Respondent to use the trademark EUROSKO. Furthermore, the Respondent is not an authorized dealer of the Complainant’s products or services and has never had a business relationship with the Complainant. No evidence has been found indicating that the Respondent is using the name EUROSKO or any similar name as a company name or that it has any other legal rights in the name. Moreover, the Complainant asserts that it is clear that the Respondent is simply trying to trade off the goodwill of the Complainant’s marks. Finally, the Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain name incorporating the Complainant’s trademark in order to generate traffic and income through a site that sells counterfeit merchandise. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. Section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
These facts establish the Complainant’s prima facie showing. The Respondent has not provided any basis on which that showing may be overcome. The Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to sell counterfeit products, using a disputed domain name that incorporates the Complainant’s mark, is a clear example of bad faith registration and use under the Policy. Furthermore, as previously noted, the disputed domain name carries a high risk of implied affiliation.
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 <eurosko.net> be transferred to the Complainant.
Evan D. Brown
Date: March 9, 2020