Dansko, LLC v Scarlett Stewart

WIPO Case No. D2024-4712

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dansko, LLC v. Scarlett Stewart

Case No. D2024-4712

1. The Parties

The Complainant is Dansko, LLC, United States of America (“US”), represented by Cozen O'Connor, U.S.

The Respondent is Scarlett Stewart, Germany.

2. The Domain Name and Registrar

The disputed domain name <danskosandalscanada-ca.com> is registered with Web Commerce

Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14,

2024. On November 15, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On November 17, 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 19, 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 the same date.

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 25, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was December 15, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 16, 2024.

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The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 19, 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

Since 1990, the Complainant has provided comfort footwear to customers around the world.

The Complainant owns various US trademark registrations for DANSKO, including Reg. No. 2712957

(registered on May 6, 2003).

The disputed domain name was registered on October 29, 2024. The website associated with the disputed

domain name resolves to a website featuring the Complainant’s DANSKO marks and purporting to offer

identical footwear goods.

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.

B. Respondent

The Respondent has not submitted any 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 mark DANSKO 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 “sandalscanada-ca”) may bear on assessment of the second and

third elements, the Panel finds the addition of such terms 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 that the first element of the Policy has been established.

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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.

Having reviewed the available record, the Panel finds that 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 that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition and use of the disputed domain name

incorporating the Complainant’s mark together with the terms “sandalscanada-ca”, it can be inferred that the

Respondent was aware of the Complainant’s mark when registering the disputed domain name.

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, 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.

Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s mark and the

composition of the disputed domain name. Under the circumstances of this case, the use of the disputed

domain name to purportedly sell merchandise branded with the Complainant’s DANSKO marks supports a

finding of bad faith under the Policy.

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 <danskosandalscanada-ca.com> be transferred to the Complainant.

/Tobias Zuberbühler/

Tobias Zuberbühler

Sole Panelist

Date: January 2, 2025