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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steven Madden, Ltd. v. Domain Admin, c/o Whoisprotection.cc / Huber Tracy, Domain Admin, Whoisprotection.cc

Case No. D2021-1017

1. The Parties

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

Respondents are Domain Admin, c/o Whoisprotection.cc, Malaysia / Huber Tracy, United States, and Domain Admin, Whoisprotection.cc, Malaysia (hereinafter, jointly and severally, “Respondent”).

2. The Domain Names and Registrars

The disputed domain names <stevemaddenmx.com> and <stevemaddenoutletmx.com> are registered with Mat Bao Corporation (the “First Registrar”) and Alibaba.com Singapore E-Commerce Private Limited (the “Second Registrar”), respectively (collectively referred to as the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2021, the Second Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the disputed domain name <stevemaddenoutletmx.com> and providing the contact details. On April 12, 2021, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <stevemaddenmx.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 13, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 13, 2021 (hereinafter the “Complaint”).

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 17, 2021.

The Center appointed M. Scott Donahey as the sole panelist in this matter on May 25, 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. Consolidation

The disputed domain name <stevemaddenmx.com> is registered under the name of Huber Tracy, giving an address in the United States. The disputed domain name <stevemaddenoutletmx.com> is registered under the name of Domain Admin, Whoisprotection.cc with an address in Malaysia. Consolidation of domain names in a domain dispute is only appropriate where a complainant can show (1) that the circumstances indicate that the domain names or corresponding websites are subject to common control or ownership and (2) the consolidation would be fair and equitable to all parties. WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.11.2.

Circumstances may indicate that consolidation is equitable and procedurally efficient, even where the disputed domain names are registered under different names. Complaint, Annex 2. Where a complaint was filed in respect of two different domain names, consolidation has been found to be appropriate where the domain names target the complainant in the same manner. Complaint, Annex 3. Where the domain names at issue target the complainant in the identical way, consolidation has been found to be appropriate. Complaint, Annexes 3, 4, 5, 6, and 7.

In the present case, Respondent Huber Tracy appears to be a resident of the United States, yet in setting out his address for the registration of the disputed domain name he inappropriately uses the state postal abbreviation “TN” immediately following the street address. Any resident of the United States would know this to be inappropriate use of the state postal abbreviation. The required postal zip code is missing. The phone number is proceeded by a “0” which causes the phone number to be inoperable in the United States. When one dials the given number excluding the incorrect “0,” the caller receives a recorded message indicating that the number dialed is no longer in service. Complaint, Annexes 6 and 8A.

Both of the disputed domain names initially resolved to the same identical layout with the “STEVE MADDEN” mark prominently displayed. Complaint, Annexes 16B and 16C. Later on the disputed domain name <stevemaddenmx.com> resolved to a list of apparently fraudulent websites for various shoe manufacturers, and the disputed domain name <stevemaddenouletmx.com> was included in that list, an indicator of common ownership. Complaint, Annex 16A.

Finally, both disputed domain names share the same ASN and IP address. Complaint, Annex 8.

Accordingly, the Panel finds that the disputed domain names exhibit indicia that they are under common control or ownership and that consolidation would be fair and equitable to both Parties. Accordingly, the Panel determines that the disputed domain names will be consolidated in the present proceedings.

5. Factual Background

Complainant was founded in 1990 by the fashion designer Steve Madden. Complainant is a publicly traded apparel company, whose goods include a wide range of footwear, clothing, accessories, and others, which are sold worldwide. Complainant has been using the STEVE MADDEN trademark since its inception and is the owner of numerous trademark registrations for STEVE MADDEN in Mexico, the United States, Canada, the European Union, and Australia, the earliest of which was registered on July 21, 1995. Complainant owns and conducts its Internet business through its websites at “www.stevemadden.com”, “www.stevemadden.eu”, “www.stevemadden.ca”, “www.stevemadden.com.mx”, “www.stevemadden.com.au”, and “www.stevemadden.mx”, the earliest of which was registered on August 18, 1998. Complaint, Annex 14. Because of the long use of the STEVE MADDEN mark in commerce, the mark has acquired consumer recognition and goodwill. Complaint, Annex 15.

Respondent registered the disputed domain names on November 12, 2020 and March 27, 2021. Complaint, Annex 1. Each of the disputed domain names has resolved or currently resolves to a website which purports to be that of Complainant and which features Complainant’s STEVE MADDEN trademark. Complaint, Annexes 16A and 16B. The website appears to be a retail outlet for Complainant’s goods, and purportedly enables customers to purchase Complainant’s goods online. Internet users who are misled may inadvertently disclose personal financial information, including credit card or banking numbers, and other private information to Respondent.

6. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain names are confusingly similar to its STEVE MADDEN trademark. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

According to paragraph 15 of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names both incorporate Complainant’s well-known STEVE MADDEN trademark. Both include “mx”, which is identical to the country code for Mexico “mx”. One of the disputed domain names also includes the English word, “outlet”, indicating that it is a retail site. The Panel finds that the disputed domain names are confusingly similar to Complainant’s well-known trademark.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost 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. WIPO Overview 3.0, section 2.1.

In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Respondent initially used both disputed domain names which incorporate Complainant’s STEVE MADDEN trademark to resolve to a website which featured Complainant’s STEVE MADDEN trademark and appeared to be a retail outlet for Complainant’s goods. Later, Respondent used one of the disputed domain names to resolve to a website that included a list of websites that appeared to be shoe retailers, which list included the other disputed domain name. Respondent created the disputed domain names which included the well-known STEVE MADDEN trademark to trade on the goodwill and reputation which Complainant had created. The Panel finds that Respondent has registered and is using the disputed domain names in bad faith.

8. 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 <stevemaddenmx.com> and <stevemaddenoutletmx.com> be transferred to Complainant.

M. Scott Donahey
Sole Panelist
Date: May 29, 2021

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