Dansko, LLC v Jasmine Gallagher

WIPO Case No. DCO2024-0093

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Jasmine Gallagher

Case No. DCO2024-0093

1. The Parties

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

O'Connor, United States.

The Respondent is Jasmine Gallagher, Germany.

2. The Domain Name and Registrar

The disputed domain name <danskosandalscanada.co> is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2024. On November 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 December 2, 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 December 2, 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 December 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2024.

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The Center appointed Erica Aoki as the sole panelist in this matter on January 3, 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 provided comfort footwear to customers around the world since 1990.

Beginning with clog sales, Complainant now offers other footwear including boots, sandals, flats, and sneakers, all designed for long-wear and comfort. As testament to their comfort, Complainant’s footwear has been a top choice of medical professionals for over two decades.

The Complainant has gained significant common law trademark rights in its DANSKO marks, through the use, advertisement, and promotion of such marks in connection with its footwear goods. The Complainant has also protected its DANSKO trademarks by obtaining trademark registrations in the United States Patent and Trademark Office. These registrations include, but are not limited to the following:

DANSKO RN: 3854991 SN: 77913037 Registered on September 28, 2010 (International Class: 25)
DANSKO RN: 4229847 SN: 85572046 Registered on October 23, 2012 (International Class: 03)
(International Class: 18) (International Class: 25) (International Class: 35)

The disputed domain name was registered on November 18, 2024. The disputed domain name resolves to a website prominently featuring the Complainant’s DANSKO trademarks and purporting to offer footwear goods at discounted prices.

5. Parties’ Contentions

A. Complainant

Since 1990, the Complainant has provided comfort footwear including boots, sandals, flats, and sneakers, all designed for long-wear and comfort to customers around the world.

As testament to their comfort, the Complainant’s footwear has been a top choice of medical professionals for over two decades.

The Complainant protected its DANSKO trademarks by filing for and obtaining trademark registrations in the United States Patent and Trademark Office. Beyond registering its DANSKO trademarks, the Complainant has also spent significant resources protecting its DANSKO trademarks from infringement, including obtaining victories in other proceedings and the transfer to the Complainant of other domain names incorporating DANSKO trademark or a variation thereof.

The disputed domain name resolves to a website with infringing content, prominently featuring the
Complainant’s DANSKO trademarks and purporting to offer identical footwear goods.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of 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.

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6. Discussion and Findings

The Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect

of which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the facts presented by the Complainant, this Panel finds that the disputed domain name identically adopts the Complainant’s DANSKO trademarks in which the Complainant has rights under the Policy, paragraph 4(a)(i). The Complainant has established its rights in DANSKO through registration and use. The Panel finds that there is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s mark in full, with the descriptive phrase “sandals canada”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s DANSKO trademarks (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

B. Rights or Legitimate Interests

The Panel finds the following on record in this proceeding under the Policy:

The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks.

There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization.

There is no evidence on record that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In addition, the composition of the disputed domain name incorporates the Complainant’s DANSKO trademark and the descriptive phrase “sandals canada”, which does nothing to distinguish the disputed domain name from Complainant’s DANSKO trademarks. In fact, it increases the likelihood of confusion, as it indicates that it is a place in Canada (where Complainant operates) to shop for the Complainant’s footwear, including sandals. This carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

The Panel therefore finds that the Complainant has established an unrebutted prima facie case that the
Respondent has no rights or legitimate interests in the disputed domain name, under the Policy, paragraph
4(a)(ii).

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C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent has used the disputed domain name intentionally to imitate the Complainant, as the website prominently displays Complainant’s DANSKO trademarks in connection with the sale of unauthorized or alleged counterfeit goods. The Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation and to trade off Complainant’s goodwill.

The Complainant’s trademark was registered many years before the registration of the disputed domain name and it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s DANSKO trademark when registering the disputed domain name.

Furthermore, the Complainant’s DANSKO trademark is distinctive and unique to the Complainant. It is therefore beyond the realm of coincidence that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant.

The Panel finds that the Respondent was aware of the Complainant’s rights in the DANSKO trademark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.

Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy,
the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under

the Policy, paragraph 4(a)(iii).

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 <danskosandalscanada.co> be transferred to the Complainant.

/Erica Aoki/
Erica Aoki
Sole Panelist
Date: January 17, 2025