Dansko, LLC v Eleanor Hanson

WIPO Case No. D2025-1114

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Eleanor Hanson

Case No. D2025-1114

1. The Parties

The Complainant is Dansko, LLC, United States of America, represented by Cozen O’Connor, United States of America.

The Respondent is Eleanor Hanson, Germany.

2. The Domain Name and Registrar

The disputed domain name <danskoauckland.com> is registered with Paknic (Private) Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2025. On March 19, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2025, and on March 28, 2025, 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 (Whois Agent, Web Domains by
Proxy) and contact information in the Complaint. The Center sent an email communication to the
Complainant on March 28, 202, 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 30, 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 31, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 20, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 22, 2025.

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The Center appointed Halvor Manshaus as the sole panelist in this matter on May 6, 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 has offered footwear to customers around the world since 1990.

The Complainant holds several trademarks comprising the word “DANSKO”, including:

- The US registration number 3,265,196 registered on July 17, 2007 for various goods in class 25.

- The US registration number 4,229,847 registered on October 23, 2012 for various goods in classes 3,
18, 25, and 35.

- The US registration number 3,854,991 registered on September 28, 2010, for various goods in class
25.

The Respondent registered the disputed domain name in 2025. The disputed domain name resolves to a website offering footwear and displaying the Complainant’s trademark.

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 name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its trademark, as
it incorporates the Complainant’s trademark in its entirety, with the addition of the geographical term
“aukland”. According to the Complainant, the addition of the term “aukland” does not serve to distinguish the
disputed domain name from the Complainant’s trademark. Moreover, the inclusion of the generic Top-Level
Domain “.com” does not create a meaningful distinction from the Complainant’s trademark.

The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorized, licensed, or otherwise permitted to use the Complainant’s trademark. There is no evidence that the Respondent is commonly known by the disputed domain name, nor that it has used the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website offering identical footwear to the Complainant, prominently displaying the Complainant’s trademark.

Lastly, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. According to the Complainant, the Respondent has attempted to take commercial advantage of Complainant’s trademarks and commercial reputation and to trade off the Complainant’s goodwill. The disputed domain name resolves to a website that appears to mimic the Complainant’s bona fide site by prominently displaying the Complainant’s trademarks and purporting to sell its goods, indicating use for fraudulent purposes and that the Respondent had full knowledge of the Complainant’s rights. According to the Complainant, this indicates that the Respondent registered and uses the disputed domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Respondent’s use of a privacy service to register the disputed domain name and the fact that registered the disputed domain name long after the Complainant registered its trademark and began advertising and using under the trademark further evidences the Respondent’s bad faith.

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B. Respondent

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

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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is 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, “auckland”, 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. The Panel finds that the inclusion of the geographic term “auckland” does not prevent a finding of confusing similarity. 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.

The Respondent has used the disputed domain name to host a website displaying the Complainant’s trademark, where similar goods as the Complainant are offered. Panels have held that the use of a domain name for illegitimate activity here, claimed as applicable to this case impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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Furthermore, the disputed domain name consists of the trademark plus the geographic term “auckland”
which effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO

Overview 3.0, section 2.5.1.

As such, 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent registered the disputed domain name years after the Complainant registered its trademark and used the disputed domain name to host a website offering identical goods to those of the Complainant while displaying the Complainant’s trademark. As such, the Panel finds it unlikely that the Respondent was unaware of the Complainant’s trademark registration.

Moreover, the Panel finds it likely that the Respondent registered and is using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The combination of the Complainant’s trademark and the geographic term “aukland” suggests that the disputed domain name is affiliated with the Complainant. Furthermore, the use of a privacy protection service to conceal the Respondent’s identity further supports the Panel’s finding of bad faith registration and use.

Further, panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off 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.

Accordingly, 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 name <danskoauckland.com> be transferred to the Complainant.

/Halvor Manshaus/
Halvor Manshaus
Sole Panelist
Date: May 26, 2025