Dansko, LLC v Hong camp

WIPO Case No. D2024-4497

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Hong camp

Case No. D2024-4497

1. The Parties

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

O'Connor, United States.

The Respondent is Hong camp, United States.

2. The Domain Name and Registrar

The disputed domain name <danskonew.com> 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 October 31, 2024. On November 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2024, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2024, 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 November 7, 2024.

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 November 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2024.

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The Center appointed Karen Fong as the sole panelist in this matter on December 3, 2024. 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

Founded in 1990 in the United States, the Complainant provides comfort footwear including clogs, boots,
sandals, flats and sneakers designed for long wear and comfort under the trade mark DANSKO. The

Complainant has trade mark registrations for DANSKO in the United States including the following:

- Registration No. 2712957 for DANSKO registered on May 6, 2003;

- Registration No. 3265194 for DANSKO registered on July 17, 2007; and

- Registration No. 4229847 for DANSKO registered on October 23, 2012.

(individually and collectively, the “Trade Mark”).

The Trade Mark is also used by the Complainant in a stylized form (“the Stylised Mark”) which is displayed on its website at the domain name <dansko.com>.

The Respondent, who appears to be based in the United States, registered the disputed domain name on the Stylised Mark prominently, mimics the Complainant’s own website, including using its images, and purportedly offers for sale merchandise that bears the Trade Mark and purports to be the Complainant’s products (the “Website”). The Website has a copyright statement “@2024 Dansko All Rights Reserved”. However, the “About Us” section of the Website claims to be a chain of baby stores in Australia “Baby Village” and includes photographs of Baby Village stores and appears to be taken from the website at <babyvillage.com.au>. The “Contact Us” section has an Australian address which is identical to an address on the Baby Village website.

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 the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

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 trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

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Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the Trade Mark is reproduced within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the Trade Mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

While the addition of the other term here, “new” after the Trade Mark in the disputed domain name 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 Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, 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.

While 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 often impossible 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. 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 record, the Panel finds the Complainant has established a prima facie case that the 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, the nature of the disputed domain name is inherently misleading as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Based on the available record, 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 must have been aware of the Trade Mark when he/she registered the disputed domain name given the Trade Mark was registered prior to registration of the disputed domain name and the use of the Trade Mark on the Website. It is therefore implausible that the Respondent was unaware of the Complainant when he/she registered the disputed domain name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),

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panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s

mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice
of the disputed domain name without any explanation is also a significant factor to consider (as stated in
WIPO Overview 3.0, section 3.2.1). The disputed domain name falls into the category stated above and the
Panel finds that registration is in bad faith.

The disputed domain name is also being used in bad faith. The products offered for sale on the Website are likely to be counterfeit and/or unauthorised DANSKO products considering that there is no relationship between the Parties. The Website also includes details of a third party brand owner which also appears to have no relationship with the Respondent. This is evidence that the Respondent is likely to be a cybersquatter and in the habit of copying brand owner websites.

The Website prominently displays the Trade Mark, without any disclaimer disclosing (the lack of) relationship between the Parties. The content of the Website is calculated to give the impression it has been authorized by or connected to the Complainant when this is not the case. The Website was set up to deliberately

mislead Internet users into believing that it is connected to, authorised by or affiliated with the Complainant. commercial gain, by misleading Internet users into believing that the Website was, and the products sold on it are those of or authorised or endorsed by the Complainant.

It is highly likely that Internet users when typing the disputed domain name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The disputed domain name is likely to confuse Internet users trying to find the Complainant’s

official website. Such confusion will inevitably result due to the fact that the disputed domain name

comprises the Trade Mark in its entirety with the addition of a descriptive term.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <danskonew.com> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: December 17, 2024