Dansko, LLC v Hasialis Brawn

WIPO Case No. D2025-2011

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Hasialis Brawn

Case No. D2025-2011

1. The Parties

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

O’Connor, United States.

The Respondent is Hasialis Brawn, Chile.

2. The Domain Name and Registrar

The disputed domain name <dansko-shoes.shop> is registered with West263 International Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2025. On
May 21, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in
connection with the disputed domain name. On May 22, 2025, the Registrar transmitted by email to the
Center its verif ication response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown Registrant) and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 23, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant f iled an amended Complaint on May 26, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on May 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 22, 2025.

page 2

The Center appointed Alistair Payne as the sole panelist in this matter on June 27, 2025. The Panel f inds 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

Since 1990, the United States based Complainant has manufactured and distributed comfort footwear around the world under the trade mark DANSKO. It owns various registered trade marks for its DANSKO mark, including United States trade mark 2712957 registered on May 6, 2003. The Complainant owns the domain name <dansko.com> from which it offers its range of clogs and other footwear, including boots, sandals, f lat shoes and sneakers.

The disputed domain name was registered on April 25, 2025 and resolves to a website that offers for sale a range of footwear, including, sneakers.

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 it owns registered trade mark rights as set out above and that the disputed domain name wholly incorporates and is nearly identical to the Complainant’s DANSKO mark. It says that the addition of a hyphen and the descriptive term “shoes” only serves to heighten confusion and does not prevent a f inding of confusing similarity.

The Complainant submits that the Respondent is not affiliated with it and that there is no evidence to suggest that the Respondent has registered the disputed domain name for the purpose of making a bona fide offering of goods or services. The Complainant says that it has not authorised, licensed, or endorsed the

Respondent’s use of its DANSKO mark in the disputed domain name and that there is no basis to f ind that the Respondent is commonly known by the disputed domain name. It notes in this regard that the Respondent registered the disputed domain name using a privacy service and under an ultimate owner’s name that is quite dif ferent f rom “Dansko”.

The Complainant submits that the Respondent’s use of the disputed domain name is neither a bona f ide of fering of goods or services nor a legitimate noncommercial or fair use and that the disputed domain name resolves to a website with infringing content and which purports to of fer identical footwear goods to the Complainant’s and which prominently displays the Complainant’s DANSKO mark. The Complainant submits that the Respondent has made every effort to confuse consumers into believing that the disputed domain name is related to the Complainant by offering footwear and footwear products through a website that is confusingly similar to the Complainant’s own website and that this is not consistent with the Respondent having a legitimate right or bona f ide interests in the disputed domain name.

In terms of registration in bad faith, the Complainant submits that the Respondent registered the disputed domain name long after the Complainant first began advertising and using its DANSKO mark and af ter the Complainant obtained United States trade mark registration for its DANSKO mark. The Complainant asserts that the Respondent clearly had the Complainant in mind when it registered the disputed domain name, in particular, because the Respondent had constructive notice of the registration of the DANSKO mark. Upon viewing the website located at the disputed domain name, it becomes even more apparent, according to the Complainant, that the Respondent had full knowledge of the Complainant’s rights in the DANSKO mark.

page 3

The Complainant notes that the website at the disputed domain name appears to mimic Dansko’s own website, and purports to sell footwear. The Complainant submits that it is apparent that the Respondent registered the disputed domain name in order to trade-of f the Complainant’s goodwill attaching to its DANSKO mark and to confuse consumers into believing that the disputed domain name is af f iliated or associated with the Complainant when that is not the case. It says that this amounts to bad faith registration and use under paragraphs 4(b)(i) – (iv) of the Policy and that bad faith is further evidenced by the

Respondent concealing its true identity by registering the disputed domain name through a privacy service.

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 f irst 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, “-shoes” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding 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 f inds the f irst 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

The Complainant has submitted that the Respondent is not affiliated with it and that there is no evidence to suggest that the Respondent has registered the disputed domain name for the purpose of making a bona f ide offering of goods or services. The Complainant has also asserted that it has not authorised, licensed, or endorsed the Respondent’s use of its DANSKO mark in the disputed domain name and that there is no basis to f ind that the Respondent is commonly known by the disputed domain name. It has noted in this regard that the Respondent’s name is quite dif ferent f rom “Dansko”.

page 4

The Complainant has further submitted that the Respondent’s use of the disputed domain name is neither a bona f ide offering of goods or services nor a legitimate noncommercial or fair use and that the disputed domain name resolves to a website which purports to of fer footwear goods similar to the Complainant’s products. The Complainant has submitted that the Respondent has made every effort to confuse consumers into believing that the disputed domain name is related to the Complainant by offering footwear and footwear products through a website that is similar to the Complainant’s own website and that this is not consistent with the Respondent having a legitimate right or bona f ide interests in the disputed domain name.

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 Panel f inds 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 name long after the Complainant first began advertising and using its DANSKO mark and af ter the Complainant had obtained United States trade mark registration for its DANSKO mark. The website at the disputed domain name appears to offer to sell footwear-related products to Internet users and in particular sneakers. Although it is not clear based on the screenshots of the website at the disputed domain name put in evidence by the Complainant (noting that the disputed domain name did not appear to resolve to any website at the date of this Decision) whether the DANSKO mark appeared on that site or that there is a close similarity between the respective websites, based on the distinctiveness of the DANSKO mark for shoes and the fact that the disputed domain name includes the word “shoes”, it seems more likely than not that the Respondent was well aware of the Complainant’s DANSKO mark and shoe business when it registered the disputed domain name.

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.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, af f iliation or endorsement of the website.

It appears in this case that the Respondent has used the disputed domain name containing the very well- reputed DANSKO mark and the common English word “shoes” all in the context of the “.shop” Top-Level Domain space, to intentionally attract Internet users to its website by confusing them into assuming that they would be diverted to the Complainant’s website, or at least to a website authorised to of fer and sell the Complainant’s DANSKO shoes. Although a range of sneakers appear to be offered for sale from the website at the disputed domain name, this is neither the Complainant’s website nor one authorised by the

Complainant. There is also no evidence to demonstrate whether the sneakers offered are DANSKO branded shoes or not. This appears to the Panel to be a classic case of Internet user “bait and switch” for the Respondent’s commercial gain and is precisely the sort of conduct that satisf ies the requirements of paragraph 4(b)(iv) of the Policy and which, under that provision, amounts to evidence of registration and use in bad faith.

page 5

The Panel f inds 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 <dansko-shoes.shop> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: July 11, 2025