Dansko, LLC v Quintero Erin

WIPO Case No. D2025-1532

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Quintero Erin

Case No. D2025-1532

1. The Parties

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

O'Connor, United States.

The Respondent is Quintero Erin, United States.

2. The Domain Name and Registrar

The disputed domain name <dansko-shop.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2025.
On April 16, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 17, 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 (Redacted for privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 22, 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 April 23, 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 April 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2025.

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The Center appointed Clark W. Lackert as the sole panelist in this matter on May 26, 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

Since 1990, Complainant has provided comfort footwear to customers around the world using the trademark DANSKO and variations thereof (“DANSKO Marks”). 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. 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. Complainant has also protected its DANSKO Marks by filing for and obtaining trademark registrations in the United States Patent and Trademark Office. These registrations include, but are not limited to the following:

Jurisdiction	Trademark	Registration No.	Registration Date
United States	DANSKO	2712957	May 6, 2003
United States	DANSKO	3265194	July 17, 2007
United States	DANSKO	3854991	September 28, 2010
United States	DANSKO	4229847	October 23, 2012
United States	DANSKO & Design	3265196	July 17, 2007
United States	DANSKO & Design	4229969	October 23, 2012

The disputed domain name was registered on March 28, 2025 and resolves to a website offering footwear goods under the DANSKO Marks.

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.

Complainant owns numerous United States federal trademark registrations featuring the DANSKO Marks as the dominant portion of the mark. Nevertheless, in an apparent attempt to trade off of Complainant’s goodwill in its above-referenced DANSKO Marks and in complete disregard to Complainant’s rights, Respondent registered the disputed domain name long after Complainant first used and registered the DANSKO Marks. The disputed domain name is virtually identical to Complainant’s DANSKO Marks apart from the descriptive term “shop”, which does nothing to distinguish the disputed domain name from the DANSKO Marks, and in fact increases the likelihood of confusion, as it indicates it is a place to “shop” for Complainant’s footwear. Such a descriptive term in the disputed domain name does not eliminate the confusing similarity with Complainant’s DANSKO Marks. In fact, the addition of such a term in the disputed domain name has the potential to increase consumer confusion, as the term “shop” can be seen as directly related to Complainant’s business and sale of Complainant’s shoes, and indeed will deceive unsuspecting consumers into believing they can buy Complainant’s genuine products from this platform. See e.g., ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No.

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D2002-0625 (“Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark.“). Nor does the fact that the disputed domain name uses a generic Top-Level Domain “.com” create a meaningful distinction from Complainant’s DANSKO Marks. It is well established under the Policy that “the specific top level of a domain name […] does not affect the determination of the identity or similarity between a domain name and a trademark.” Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc., WIPO Case No. DTV2008- 0010; see also Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (“It is already well established that the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”).

Given the prominent use of DANSKO in the disputed domain name with the additional non- distinctive, descriptive term “shop”, consumers are likely to believe that the disputed domain name is related to, affiliated with, or otherwise sponsored by Complainant and its DANSKO Marks, and this is not the case. Therefore, the disputed domain name is confusingly similar to the DANSKO Marks in which Complainant has long- standing established rights.

In light of the foregoing, it is abundantly clear that the disputed domain name is confusingly similar to the trademarks and services in which Complainant has established rights.

Additionally, Respondent has no rights or legitimate interests in respect of the disputed domain name and there is nothing on the record to show otherwise. Respondent is not affiliated with Complainant, and there is no evidence to suggest that Respondent has registered the disputed domain name to advance legitimate interests for the bona fide offering of legitimate goods or services. Respondent has anonymously registered the disputed domain name in an effort to evade the consequences of registering the Disputed Domain for which he/she has no rights or legitimate interests. The use of a privacy or proxy registration service to register a domain name has led numerous Panels to take the registrant’s anonymity into account and draw adverse inferences. See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; HSBC Finance Corporation v. Clear Blue Sky Inc., WIPO Case No. D2007-0062.

Respondent is not commonly known as “Dansko,” or any of the terms in the disputed domain name. Moreover, there presently is no evidence of any connection between Respondent and the disputed domain name. Complainant has not authorized, licensed, or endorsed Respondent’s use of its DANSKO Marks in the disputed domain name. Thus, there is no basis to find that Respondent is commonly known by the disputed domain name under Policy paragraph 4(c)(ii). See CNU Online Holdings, LLC v. Mardva Logsdon, cashnetusafinance, WIPO Case No. D2017-0732 (stating “nothing in [the respondent’s] WHOIS information” implies that [the respondent] is ‘commonly known’ by the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply).

In light of the foregoing, it is abundantly clear that the Complainant has no rights or legitimate interests in the disputed domain name.

Respondent’s adoption and use of the disputed domain name is in bad faith and is in willful infringement of trademarks and commercial reputation and to trade off Complainant’s goodwill.

Upon viewing the website located at the disputed domain name, it becomes apparent that Respondent had full knowledge of Complainant’s rights in the DANSKO Marks. The website appears to mimic Complainant’s own bona fide website, and prominently displays Complainant’s DANSKO Marks. As such, a Panel can reasonably find that Respondent registered and uses the disputed domain name in bad faith. See Comerica Bank v. Micheal Ard, WIPO Case No. D2017-1487 (concluding that the respondent had full knowledge of the complainant’s right in the mark because the respondent “directly mimick[ed] [the complainant] on its website” where it “excessively” displayed the complainant’s mark); see also Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of

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complainant's trademarks registered in the United States). In a case similar to this one, Selfridges Retail Limited v. JiaSheng Li WIPO Case No. D2015-1759, the Panel held that the respondent showed bad faith registration and use when it used the complainant's mark on a website promoting competing footwear

products. The Panel analyzed the respondent's actions in totality, finding, “the [r]espondent's use of the
disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by
creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation,
or endorsement of the [r]espondent's website or of the products on that website.” Here, Respondent has
acted in a virtually identical manner, registering the confusingly similar disputed domain name and using it as
a website to promote identical goods in competition with or to imitate Complainant.

Bad faith is further evidenced by Respondent concealing its true identity by registering the disputed domain name through a privacy service. Considered in light of the illegitimate selection and limited use of the disputed domain name, this supports the inference that Respondent has knowingly engaged in the registration and use of the disputed domain name in bad faith. See The Saul Zaentz Company v Eurobox Ltd., WIPO Case No. D2008-0156 (“the natural inference from [the use of a privacy service] is a negative one - that the respondent has ‘something to hide.’ Taking into account the circumstances of this case, the panel draws such a negative inference”); Medco Health Solutions, Inc. v. Whois Privacy Prot. Serv., Inc., WIPO Case No. D2004-0453 (“Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is yet another example of bad faith conduct.“); Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002- 0687 (noting that use of an account masking function to hide respondent's identity is evidence of bad faith).

For all of the foregoing reasons, Respondent has engaged in bad faith use and registration of the disputed domain name.

B. Respondent

The Respondent is in default and 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 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.

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

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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 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 has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark, including using a copycat website (using the Complainant’s logo to enhance deception) in addition to a deceptive domain name to lure potential purchasers of products of the Complainant to the Respondent’s website.

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 <dansko-shop.com> be transferred to the Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: June 4, 2025