Shoe Zone Retail Limited v Le Ngoc Minh, Drop1603

WIPO Case No. D2023-4879

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shoe Zone Retail Limited v. Le Ngoc Minh, Drop1603

Case No. D2023-4879

1. The Parties

The Complainant is Shoe Zone Retail Limited, United Kingdom, represented by Freeths LLP, United

Kingdom.

The Respondent is Le Ngoc Minh, Drop1603, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <shoeszones.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23,

2023. On November 27, 2023, the Center transmitted by email to the Registrar a request for registrar the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2024.

verification in connection with the disputed domain name. On November 27, 2023, 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 (Registration Private, Domains by Proxy, LLC) and
contact information in the Complaint. The Center sent an email communication to the Complainant on

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 paragraph 5, the due date for Response was December 26, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on January 8, 2024.

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The Center appointed Marina Perraki as the sole panelist in this matter on January 12, 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

The Complainant is active in the field of footwear and services relating to footwear, with over 320 physical stores in the United Kingdom and an approximate annual turnover for 2023 of GBP 165M and for 2022 of

GBP 156M. It maintains its main website at “ The Complainant owns trademark

registrations for SHOE ZONE, including the United Kingdom trademark registration (series) No. 2210687,

SHOE ZONE – SHOEZONE (word), filed on October 7, 1999, and registered on August 11, 2000 for goods

in international class 25.

The disputed domain name was registered on August 21, 2023, and led at the time of filing of the Complaint to a website offering footwear for sale (the Website). The Complainant has received communications from customers who have ordered footwear from the Website and subsequently contacted the Complainant asking for an update on their order, mistakenly believing that they had in fact ordered from the Complainant.

Currently, the disputed domain name does not lead to an active 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain name:

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

Complainant has rights; and

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

(iii) the disputed domain name has been registered or 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 of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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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 generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the

comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds the mark is recognizable 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 addition of the letters “s” 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 1.9.

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.

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.

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

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.

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In the present case, regarding the registration in bad faith of the disputed domain name, the reputation of

the Complainant’s trademark in the footwear industry is clearly established. The Panel finds that the

Respondent knew or should have known of the Complainant and deliberately registered the confusingly similar disputed domain name, especially because it resolves to a website, offering similar goods as the Complainant.

Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record,

the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith

under the Policy.

Furthermore, the Panel considers that disputed domain name is used in some type of fraudulent scheme, as

the Complainant submitted undisputed evidence that customers who have ordered footwear from the

disputed domain name, requested updates from the Complainant, as their purchases had yet to be

delivered. This further supports a finding of bad faith registration and use.

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 <shoeszones.com> be transferred to the Complainant.

/Marina Perraki/

Marina Perraki

Sole Panelist
Date: January 26, 2024