Dansko, LLC v Delchamps, Jeremy Campbell

WIPO Case No. D2025-0810

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Delchamps, Jeremy Campbell

Case No. D2025-0810

1. The Parties

The Complainant is Dansko, LLC, United States of America (“United States”), represented by Cozen

O'Connor, United States.

The Respondent is Delchamps, Jeremy Campbell, United States.

2. The Domain Names and Registrar

The disputed domain names <dansko.life> and <danskostore.click> are registered with NameSilo, LLC

NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2025. On February 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 2025, 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 amended Complaint on March 3, 2025.

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 the Respondent of the
Complaint, and the proceedings commenced on March 6, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was March 26, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 27, 2025.

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The Center appointed Ik-Hyun Seo as the sole panelist in this matter on April 4, 2025. 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 a footwear company established in 1990, beginning with clogs. Its business began with clogs, and expanded to other footwear including boots, sandals, flats, and sneakers. Inc. Magazine named Dansko in its list of 500 fastest-growing private companies in 1999 and 2000 and in September 2014,

Dansko was recognized on B Corp's “Best for Workers” list. The Complainant has a number of trademark
registrations for DANSKO including the following in the United States: Trademark Registration Number
3854991 registered on September 28, 2010, Trademark Registration Number 4229847 registered on
October 23, 2012, Trademark Registration Number 3265194 registered on July 17, 2007, and Trademark

Registration Number 2712957 registered on May 6, 2003.

The Respondent appears to be an individual with an address in the United States.

The disputed domain name <dansko.life> was registered on February 14, 2025, and the disputed domain name <danskostore.click> was registered on February 10, 2025. At the time of the filing of the Complaint, the disputed domain names resolved to websites offering Dansko branded footwear for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to the marks in which the Complainant has rights since the disputed domain name <dansko.life> incorporates the DANSKO mark in its entirety with no additional terms, and the disputed domain name <danskostore.click> merely adds the descriptive term “store” to the DANSKO mark.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed
domain names and confirms that it has not authorized or licensed rights to the Respondent in any respect.
The Complainant also contends that the disputed domain names resolve to websites with identical content
that are confusingly similar to the Complainant’s own official website, prominently featuring the
Complainant’s DANSKO mark and purporting to offer genuine Dansko brand footwear goods. The
Complainant contends that the Respondent is offering for sale unauthorized or counterfeit goods and that the
Respondent lacks rights or legitimate interests in the disputed domain names.

Finally, the Complainant contends that the disputed domain names were registered and used in bad faith. The Complainant contends that based on the Respondent’s use of the disputed domain names, it is apparent that the Respondent had full knowledge of the Complainant’s rights in the DANSKO mark when registering the disputed domain names. The Complainant also contends that further bad faith is evidenced by the Respondent’s use of a privacy service to conceal its true identity. In addition, the Complainant contends that the Respondent’s use trades on the Complainant’s goodwill in its DANSKO mark and confuses consumers into believing that the disputed domain names are affiliated or associated with the Complainant when that is not the case.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name <dansko.life> consists entirely of the DANSKO mark and the disputed domain name <danskostore.click> consists of the DANSKO mark and the descriptive term “store”. Therefore, the entirety of the mark is reproduced within the disputed domain names and accordingly, the disputed domain

names are identical/confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0,
section 1.7.

Although the addition of other terms - here, “store” in the disputed domain name <danskostore.click> - may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Moreover, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it

effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. WIPO Overview
3.0, section 2.5.1.

Here, the disputed domain name <dansko.life> only contains the Complainant’s distinctive DANSKO mark and visitors are likely to be misled that it is the website owned and operated by the Complainant. Further, the disputed domain name <danskostore.click> adds the additional term “store” to the DANSKO mark, which

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suggests that the disputed domain name is the online store of the Complainant, especially since DANSKO is
a mark well-known in connection with footwear.

Furthermore, the Respondent is using the disputed domain names to display a website confusingly similar to the official website of the Complainant which indicates that the Respondent impersonated or passed itself off as the Complainant. Panels have held that the use of a domain name for illegitimate activity - here, claimed impersonation/passing off - can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent registered the disputed domain names containing the Complainant’s well-known DANSKO mark and linked them to websites displaying the DANSKO mark and offering Dansko-brand footwear for sale. Based on this use, it is highly unlikely for the Respondent to have registered the disputed domain names by chance. Rather, the Panel finds that the Respondent most likely was aware of the Complainant and its trademark and targeted the Complainant by registering the disputed domain names.

Further, Panels have found that the mere registration of a domain name that is confusingly similar to a
widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
WIPO Overview 3.0. Section 3.1.4.

Panels have held that the use of a domain name for illegitimate or illegal activity constitutes bad faith. Here, the Complainant contends that the Respondent is selling unauthorized or counterfeit goods through the disputed domain names but has not submitted evidence to support such a claim. But based on the nature of use, and particularly, the confusing similarity between the websites at the disputed domain names and the Complainant’s own official website, the Panel finds that the Respondent is at the very least engaging in illegitimate activity by impersonating or passing itself off as the Complainant, which constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 <dansko.life> and <danskostore.click> be transferred to the
Complainant.

/Ik-Hyun Seo/ Ik-Hyun Seo Sole Panelist Date: April 18, 2025