Dansko, LLC v jing wang

WIPO Case No. D2024-5094

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. jing wang

Case No. D2024-5094

1. The Parties

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

O'Connor, United States.

The Respondent is jing wang, China.

2. The Domain Name and Registrar

The disputed domain name <danskosshoes.shop> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 11, 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 11, 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 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2025.

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The Center appointed Alfred Meijboom as the sole panelist in this matter on January 16, 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 been providing comfort footwear to customers around the world.

The Complainant is owner of several trademark registrations for DANSKO in the United States, including:

- trademark registration with number 2712957 of May 6, 2003 for goods in class 25;
- trademark registration with number 3265194 of July 17, 2017 for goods in class 25; and
- trademark registration with number 3854991 of September 28, 2010 for goods in class 25.

The disputed domain name was registered on November 25, 2024. The disputed domain name resolves to a website which prominently displays a third-party WAYFAIR trademark and offers various third-party products for sale.

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 with the descriptive term “sshoes,” which does nothing to distinguish the disputed domain name from the Complainant’s DANSKO trademarks, and in fact increases the likelihood of confusion, as it indicates it is a place to shop for the Complainant’s footwear.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known as “Dansko,” or any of the terms in the disputed domain name, the Respondent is not affiliated with the Complainant, the Complainant has not authorized, licensed, or endorsed the Respondent’s use of its DANSKO trademarks in the disputed domain name, and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests for the bona fide offering of legitimate goods or services.

According to the Complainant the disputed domain name was registered in bad faith as the Respondent clearly had the Complainant in mind when registering the disputed domain name because the Respondent had constructive notice of the DANSKO trademarks, and the disputed domain name contains the identical DANSKO trademarks. The Complainant further alleges that the Respondent’s use of the disputed domain name in bad faith is evidenced by the Respondent attempting to pass its website at the disputed domain name off as “Wayfair,” which is a well-known online ecommerce platform, and 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.

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6. Discussion and Findings

The Respondent did not file a response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw

appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences, as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The

Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

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 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 another term or element – here “sshoes” – 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.

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.

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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 disputed domain name resolves to a website which clearly displays the third-party trademark and appears to offer for sale various third-party goods. At the same time the composition of the disputed domain name, incorporating the Complainant’s trademark with an additional letter “s” and the term “shoes” referring to the Complainant’s products, indicates awareness of the Complainant and the Respondent’s intent to confuse unsuspecting Internet users into believing that the disputed domain name is operated by the Complainant. The use of the Complainant’s mark for a website advertising for sale third-party goods is not a bona fide offering nor legitimate noncommercial or fair use within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy.

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.

WIPO Overview 3.0, section 3.2.2.

In the present case, the Panel notes that the DANSKO trademarks are inherently distinctive and were used letter “s” and the term “shoes” that refers to the Complainant’s products, from which the Panel infers that it is likely that the Respondent had the Complainant’s DANSKO trademark in mind when it registered the disputed domain name.
and registered for, inter alia, footwear well before the registration of the disputed domain name.

The Panel also finds that the disputed domain name reproduces the entirety of the Complainant’s trademark and is likely to unduly profit from the value of the Complainant’s trademark.

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 therefore 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 <danskosshoes.shop> be transferred to the Complainant.

/Alfred Meijboom/
Alfred Meijboom
Sole Panelist
Date: January 27, 2025