WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steven Madden, Ltd. v. Domain Administrator, Privacyguardian.org, Jonas Weber, Gottschalk Ursula, Christina Kappel, Whoisprotection.cc, Domain Admin, Engel Ralph

Case No. D2021-0090

1. The Parties

The Complainant is Steven Madden, Ltd., United States of America (“United States” or “U.S.”), represented by Ballard Spahr, LLP, United States.

The Respondents are Domain Administrator, Privacyguardian.org, United States, Jonas Weber, Germany, Gottschalk Ursula, Germany, Christina Kappel, Germany, Whoisprotection.cc, Domain Admin, Malaysia, and Engel Ralph, Germany.

2. The Domain Names and Registrars

The disputed domain names <stevemaddenaustralia.com> and <stevemaddenmexico.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “First Registrar”).

The disputed domain name <stevemadden-ca.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Second Registrar”).

The disputed domain names <stevemaddenireland.com> and <stevemaddenoutlets.com> are registered with 1API GmbH (the “Third Registrar”).

The disputed domain name <stevemaddenshoescanada.com> is registered with NameSilo, LLC (the “Fourth Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 13, 2021, the Fourth 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.

On January 14, 2021, the Third 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. On January 14, 2021, the First 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 Respondents and contact information in the Complaint. On January 15, 2021, the Second 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 15, 2021, providing the registrants and contact information disclosed by all the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 19, 2021.

The Complainant requested on January 26, 2021, to add the domain name <stevemaddenoutets.com> to the proceeding and submitted a new amended Complaint. On January 27, 2021, the Center transmitted by email to the Third Registrar a new request for registrar verification in connection with the disputed domain names. On January 29, 2021, the Third 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 Respondents and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 4, 2021, providing the registrants and contact information disclosed by all the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a new amended Complaint on February 5, 2021.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. The Respondents did not submit any formal response. However, on January 15, 2021 the Respondent Whoisprotection.cc, Domain Admin provided additional contact details for the disputed domain name <stevemadden-ca.com>. The Center received several third party communications from an individual named in such additional contact details indicating that it was not the registrant of the disputed domain name <stevemadden-ca.com>. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on March 8, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 12, 2021. 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, founded in 1990 by fashion designer Steven Madden, is a publicly traded apparel company that provides footwear, clothing, accessories and others goods sold throughout the world under a family of trademarks including the STEVE MADDEN trademark.

The Complainant owns numerous United States, Canadian, Mexican, European Union and Australian trademark registrations, such as U.S. Trademark Registration No. 2,012,115 registered on October 29, 1996, and European Union Trademark Registration No. 010206415 registered on January 18, 2012.

The Complainant also owns numerous domain names that include the Complainant’s trademark, e.g. <stevemadden.com> registered on August 18, 1998, and <stevemadden.eu> registered on April 7, 2006.

The disputed domain names where registered in the period from April to December 2020. At the time of Complaint, the disputed domain names resolved to similar fraudulent website posing as the Complainant. At the time of drafting the Decision, the disputed domain names resolved to the same webpages, except for the disputed domain names <stevemadden-ca.com> and <stevemaddenshoescanada.com> that resolved to error pages.

5. Parties’ Contentions

A. Complainant

Complainant argues that the circumstances indicate that the disputed domain names are subject to common control or ownership. The disputed domain names were registered within an eight-month period between April and December 2020. Based upon the registrant information two domain names share an identical registrant located in Germany. Three of the four known listed registrants of the disputed domain names are located in Germany despite none of the websites being directed at Germany or the European Union. Each of these registrants has a “[…]@yeah.net” email address. The Complainant believes this indicates that the listed email addresses are false. There are many commonalities between the properties associated with the disputed domain names that suggest common control or ownership. For example, many of the domain names shares the same ANS and name servers. For the domain names that resolve, they resolve to websites that feature the same overall layout, and the websites seem to offer counterfeit merchandise purported to be from the Complainant. The disputed domain names have a similar naming pattern, with each including the Complainant’s trademark STEVE MADDEN.

The Complainant provides evidence of trademark registrations, and argues that all the disputed domain names incorporate the Complainant’s trademark STEVE MADDEN. The addition of the descriptive terms as “shoes”, “outlet” or country names or indications does not prevent a finding of confusing similarity with the Complainant’s trademark.

The Complainant asserts that the Respondents are not authorized to use the Complainant’s trademark. The Respondents cannot establish rights in the disputed domain names, as it has not made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Complainant submits that the Respondents’ use is fraudulent.

The Complainant argues that the Respondents have intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the disputed domain names. The Respondents have chosen the disputed domain names to obtain a commercial benefit by riding on the reputation and goodwill of the Complainant. Moreover, the Complainant argues that it is not possible to conceive of a plausible circumstance in which the Respondents could legitimately use the disputed domain names.

B. Respondent

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

6. Discussion and Findings

A. Procedural matters

The Complainant argues that the domain names are under common control. The Panel has carefully examined the evidence in the case file and notes that the Respondents have not – despite being given the opportunity – argued or filed any evidence to rebut the Complainant’s case for consolidation. The Panel notes the pattern in the registrants’ WhoIs contact information, the use of the same name server, the nature of the trademark and the disputed domain names, and, last but not least, the fact that the disputed domain names have resolved to similar webpages that seem to offer counterfeit merchandise purported to be from Complainant. In addition, each of the Respondents, other than those relating to privacy services, has a “[…]@yeah.net” email address. The Panel concludes that the disputed domain names are subject to common control and consolidation is fair and equitable to the Parties. Based on the evidence, and consideration of procedural efficiency, the Panel orders consolation of the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

Furthermore, the Panel notes the Respondent Whoisprotection.cc, Domain Admin informed the Center on January 15, 2021, that the disputed domain name <stevemadden-ca.com> was under privacy and provided additional contact details relating to a claimed underlying registrant located in Canada with a “[…]@yeah.net” email address. The Center received several third party communications from an individual claiming to be named in such additional contact details (except for the email address) indicating that it was not the registrant of the disputed domain name <stevemadden-ca.com>. In the circumstances, the Panel considers it likely that the underlying registrant indicated by the Respondent Whoisprotection.cc, Domain Admin has been a victim of identity theft and the registration of the disputed domain name <stevemadden-ca.com> was made by a third party. Accordingly, the Panel finds that the underlying registrant indicated by the Respondent Whoisprotection.cc, Domain Admin is not a Respondent under the Policy and that no purpose would be served in naming such individual in the Decision.

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark STEVE MADDEN. The test for confusing similarity involves a comparison between the trademark and the domain names. The disputed domain names incorporate the Complainant’s trademark, with the addition of dictionary terms such as “shoes”, “outlet” or country names or indications. These additions do not prevent a finding of confusing similarity between the disputed domain names and the trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains (“gTLDs”), see WIPO Overview 3.0, section 1.11.

The Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondents to register the disputed domain names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondents have registered the disputed domain names as a trademark or acquired unregistered trademark rights. The Respondents cannot establish rights in the disputed domain names, as they have not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering. The Respondents use of the disputed domain names is clearly not bona fide.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds that the Respondents have registered and used the disputed domain names in a scheme to attract Internet users for commercial gain, by creating confusion with the Complainant’s trademark. Moreover, the Respondents’ use of privacy protection services to conceal their identity, points in the context of this case to bad faith. Finally, the Panel agrees that it is not possible to conceive of a plausible circumstance in which the Respondents could legitimately use the disputed domain names.

For the reasons set out above, the Panel concludes that the domain names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

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 names <stevemaddenaustralia.com>, <stevemadden-ca.com>, <stevemaddenireland.com>, <stevemaddenmexico.com>, <stevemaddenoutlets.com> and <stevemaddenshoescanada.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: March 17, 2021