WIPO Arbitration and Mediation Center
ALTERNATIVE DISPUTE RESOLUTION PROCEEDING
Case No. DSE2021-0008
The Petitioner is Steven Madden, Ltd.,United States of America (“United States”), represented by Ballard Spahr, LLP, United States.
2. Domain Holder
The Domain Holder is P.L.S, Sweden
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <stevemadden.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on March 11, 2021. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on April 12, 2021.
The Center appointed Gunnar Karnell as the sole Arbitrator in this matter on April 19, 2021. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner refers in support of its claim in this proceeding particularly to its two exclusively owned European Union Trade Marks (“EUTM”) STEVE MADDEN, the first registered on September 2, 1998 (No.000429407) for goods and services in Nice classes 9, 18 and 25, the second registered on January 18, 2012 (No. 010206415), for goods and services in Nice classes 3, 18 and 25. Both Trade Marks are in force in Sweden (“Trade Marks”).
The Domain Holder created the disputed domain name <stevemadden.se> on January 10, 2009.
The disputed domain name resolves to a website without any content.
5. The Petitioner’s Contentions
The disputed domain name <stevemadden.se> is, notwithstanding the Trade Mark’s separation between names, identical to the Petitioner’s STEVE MADDEN Trade Marks, legally recognized in Sweden and to which the Petitioner can prove its rights. The Petitioner’s Trade Mark rights forestall the Domain Holder’s registration of the disputed domain name.
The Petitioner is a publicly traded company that provides a wide range of footwear, clothing accessories and other goods with fashion lines, sold throughout the world under trademarks and domain names, including its house mark, the “STEVE MADDEN Mark”. It has been used exclusively and continuously on goods including footwear for over twenty years. “Consumers around the world associate the STEVE MADDEN Mark exclusively with the Petitioner and its goods offered under this Mark.”
The disputed domain name has been registered in bad faith, over ten years after the Petitioner’s first EUTM registration on September 2, 1998, and some three years after the Petitioner began to use, for its Internet website activities, among a number of other domain names, its <stevemadden.eu> domain name, created on April 7, 2006. The Domain Holder has no connection with the Petitioner. There can be no justified interest behind the Domain Holder’s registration of the Domain Name other than “to ransom the domain to Petitioner”. It is, by its registration of the disputed domain name, disrupting appropriate uses of it by the Petitioner, particularly on its Swedish market.
The Domain Holder has no rights or justified interests in the disputed domain name. It owns no right to anything identical or similar to the disputed domain name, nor has it any connection to the STEVE MADDEN Mark. It is not being used and it has not been registered in its linguistic meaning. The website is not used and does not resolve to any content. The disputed domain name appears to be passively held for the sole purpose of being sold to the Petitioner.
The Petitioner requests that the disputed domain name <stevemadden.se> shall be transferred to the Petitioner.
7. Discussion and Findings
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner’s Trade Mark STEVE MADDEN is reproduced in its entirety in the disputed domain name.
The Petitioner has proven that it holds such entitlement as defined in Paragraph 7.2 of the .se. Policy which is identical to the disputed domain name <stevemadden.se>.
B. The Domain Name has been registered or used in bad faith
The Arbitrator finds no indication on the record that might impair the Petitioner’s conclusion that the disputed domain name <stevemadden.se> has been registered and used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
Circumstances in support of a Domain Holder’s right or a justified interest in the disputed domain name have not been demonstrated.
The disputed domain name <stevemadden.se> shall be transferred to the Petitioner.
April 22, 2021