Dansko, LLC v Field Freya

WIPO Case No. D2025-0068

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Field Freya

Case No. D2025-0068

1. The Parties

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

Cozen O’Connor, United States.

The Respondent is Field Freya, Germany.

2. The Domain Name and Registrar

The disputed domain name <danskoshoescanada-ca.com> is registered with CNOBIN Information

Technology Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2025.
On January 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 10, 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 (Unknown Registrant; Redacted for Privacy) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 10,
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

January 13, 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 January 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2025.

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The Center appointed Petter Rindforth as the sole panelist in this matter on February 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, a US based company founded in 1990, is a footwear producer.

The Complainant is the owner of the trademark DANSKO, registered in several versions in US, including but not limited to:

US national trademark No. 2,712,957 DANSKO (word), registered on May 6, 2003, for goods in Intl Class 25; services in Intl Classes 3, 18, 25, and 35.
US national trademark No. 3,265,194 DANSKO (word), registered on July 17, 2007, for goods in Intl

Class 25; and

The Complainant is also the owner of the domain name <dansko.com>, registered on August 23, 1996.

The disputed domain name <danskoshoescanada-ca.com> was registered on December 10, 2024.

The Respondent is using the disputed domain name to link to a web site offering similar or identical type of goods as the Complainant.

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 virtually identical to the Complainant’s DANSKO trademark/s and domain name, apart from the geographic descriptive terms “canada” and “ca”, which rather increases the likelihood of confusion, as it indicates it is a place to shop for the Complainant’s footwear in Canada.

The Respondent is not affiliated with the Complainant and has anonymously registered the disputed domain
name in an effort to evade the consequences of registering the disputed domain name for which the

Respondent has no rights or legitimate interests.

The disputed domain name resolves to a website with infringing content, prominently featuring the

Complainant’s trademark and purporting to offer identical footwear goods.

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 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, the descriptive term “shoes”, the geographical word “Canada”, and hyphen followed by the country code for Canada “ca”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.

The Respondent, after the initial WhoIs protection was unlocked, is identified as Field Freya, and there are
no other documentation or details suggesting support of a conclusion the Respondent has rights or legitimate
interests in the disputed domain name.

Panels have held that the use of a domain name for illegitimate activity, here, possible counterfeit goods, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Even if the goods were genuine, the overall impression of the disputed domain name in both composition and content is one of impersonation seeing as the disputed domain name combines the distinctive DANSKO mark with the term “shoes” that is descriptive of the Complainant’s goods and the geographical terms “Canada” and “ca” that will likely be perceived by Internet users as suggesting an affiliate of the Complainant in Canada, which is not the case. The content of the website to which the disputed domain name resolves reinforces this false

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impression given that the webstore allegedly offers the Complainant’s products but fails to disclose its lack of

relationship to the Complainant.

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 has obviously created a domain name that clearly starts with the Complainant’s trademark, then adding the descriptive word for the Complainant’s goods and, finally, geographical terms related to Canada. Such composition of the disputed domain name clearly

indicates that the Respondent had the Complainant’s trademark in mind when registering the disputed
domain name. Further, the fact that the disputed domain name is linked to a web site falsely suggesting
affiliation to the Complainant and allegedly selling counterfeit versions of the Complainant’s goods is a clear
indication of bad faith use.

Panels have held that the use of a domain name for illegitimate and/or illegal activity, such as – in the present case – impersonation and selling alleged counterfeit versions of the Complainant’s goods, 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 name <danskoshoescanada-ca.com> be transferred to the Complainant.

/Petter Rindforth/
Petter Rindforth
Sole Panelist
Date: February 20, 2025