The Complainant is Dansko, LLC of West Grove, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Wenhong Chen of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 21, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On March 22, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 27, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2012. In accordance with the Rules, paragraph (a), the due date for Response was April 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 4, 2012. 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 an American-owned footwear company, which was established in 1990. The Complainant sells various types of shoes under its DANSKO mark and it is particularly well-known for its clogs. The Complainant’s family of DANSKO marks has gained significant consumer recognition in connection with the Complainant’s goods through substantial use, advertising and promotion.
The Complainant is the registered owner of its family of DANSKO in the United States and these registrations include:
1. U.S. Reg. No. 2,712,953 for the DANSKO and Design mark for “footwear, namely, casual outdoor shoes and work shoes for use in the health care, food service, equestrian, and general service industries” in International Class 25, registered on May 6, 2003, and used by the Complainant in connection with those services at least as early as January 1991.
2. U.S. Reg. No. 2,712,957 for the DANSKO mark for “footwear, namely, casual outdoor shoes and work shoes for use in the health care, food service, equestrian, and general service industries” in International Class 25, registered on May 6, 2003, and used by the Complainant in connection with those services at least as early as January 1991.
3. U.S. Reg. No. 3,264,216 for the DANSKO@WORK mark for “footwear, namely, casual outdoor shoes and work shoes for use in the health care, food service, equestrian, and general service industries” in International Class 25, registered on July 17, 2007, and used by the Complainant in connection with those services at least as early as January 2, 2003.
4. U.S. Reg. No. 3,265,194 for the DANSKO mark for “footwear; component parts of footwear, namely, tips and heel pieces; and leather shoes and imitation leather shoes” in International Class 25, registered on July 17, 2007, and used by the Complainant in connection with those services at least as early as January 1991.
5. U.S. Reg. No. 3,265,196 for the DANSKO & Design mark for “footwear; component parts of footwear, namely, tips and heel pieces; and leather shoes and imitation leather shoes” in International Class 25, registered on July 17, 2007, and used by the Complainant in connection with those services at least as early as January 1991.
Furthermore, the Complainant is the owner of the following domain names namely, , and , which were registered by the Complainant on June 12, 1999, August 23, 1996, and May 3, 2000 respectively. The Complainant operates its online store using the domain name whilst and host the Complainant’s main corporate websites.
The disputed domain name was registered on February 27, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The reasons are as follows:
1. The Complainant asserts that it is the registered owner of a family of trademarks in the name “Dansko” in the United States and thus has rights.
2. The Complainant is also the owner of the domain names . and .
3. The Complainant has used its family of DANSKO marks in commerce and has obtained the trademark registrations long before the registration of the disputed domain name on February 27, 2012. Given the Complainant’s extensive and exclusive rights in its family of DANSKO marks, the Complainant contends that “the Respondent had purchased the disputed domain name with full knowledge of and the sole intent to trade off of Complainant’s pre-existing rights.”
4. The Complainant asserts that the disputed domain name “incorporates the entirety of Complainant’s federally-registered DANSKO marks, displaying the identical characters in the exact same chronological order.”
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent is not affiliated with the Complainant, and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. On the contrary, the facts of this matter indicate that the Respondent is in fact advertising, offering and selling what appear to be the Complainant’s products at , and on a website that appears similar to the website available at the Complainant’s online store at . The Complainant closely monitors the distribution and sale of its DANSKO branded shoes, which are sold only via authorized retailers and at . The Complainant does not have a record of the Respondent as an authorized retailer and the Respondent’s address in China also affirms that it is not a retailer authorized by the Complainant. Thus, the Respondent’s registration of the disputed domain name is not for any bona fide offering of legitimate goods or services.
2. The fact that the Respondent deliberately incorporates copies of the DANSKO logo and trademark that the Complainant uses on its website at further shows that the Respondent has not registered the disputed domain name to advance a legitimate interest. A comparison between screen-shot of the website homepage and a screen-shot of the Complainant’s official website homepage shows that the Respondent’s website makes unauthorized use of the Complainant’s copyrighted product images, graphics and content which are used by the Complainant’s official product outlet website at .
3. The Respondent’s use of the website in connection with the sale of what would appear to be DANSKO branded shoes constitutes a willful and blatant bad-faith attempt to deceive consumers into (i) believing that consumers are visiting a website owned by the Complainant; and/or (ii) believing that the products offered for sale at are legitimate products authorized for sale by the Complainant.
4. As the Respondent has not provided and could not provide any legitimate basis for its registration of the disputed domain name that incorporates the Complainant’s DANSKO mark, and as the Respondent is using to directly infringe the Complainant’s marks, create initial interest confusion, and promote, distribute, and sell DANSKO branded shoes without authorization from the Complainant, the totality of the evidence demonstrates that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Respondent has adopted and used the disputed domain name with full knowledge of the Complainant’s prior rights given the affirmative notice provided by the Complainant. Thus, the Complainant contends that the Respondent is in willful infringement of the Complainant’s prior rights.
2. The Respondent has attempted to take commercial advantage of the Complainant’s trademark and commercial reputation and to trade off the Complainant’s goodwill which has been built through the investment of significant time, effort and resources. The Respondent, by registering the disputed domain name and by using the disputed domain name to advertise, offer for sale and sell, what would appear to be DANSKO branded shoes without authorization from the Complainant, has registered the disputed domain name for the purposes of (1) attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website, and (2) primarily for the purpose of disrupting the business of a competitor. Both grounds are circumstances of bad faith registration pursuant to Policy paragraph 4(b)(iii)-(iv).
3. On March 15, 2012, the Complainant sent the Respondent a letter, in which it notified the Respondent of the Complainant’s rights and requested that the Respondent transfer the disputed domain name to the Complainant. No response in any form has ever been received from the Respondent. Thus, the Complainant contends that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The website available at the disputed domain name is written entirely in English and is used to sell what appear to be Complainant’s products to an English-speaking market;
2. The website available at the disputed domain name includes a hyperlink called “My Account” (which links to a product order form written solely in English); and
3. The website available at the disputed domain name features hyperlinks with names such as “Shipping & Returns”, “Privacy Notice”, “Contact Us”, “Site Map” and “Gift Certificate FAQ” (each of which link to various other webpages found at and written entirely in English).
4. Given that the disputed domain name is a combination of terms with English-only definitions or English language trademark, the administrative proceedings should also be in English.
5. The Respondent is clearly familiar with, and actually engaged in illegitimate activity by utilizing the English language in connection with the disputed domain name at issue in this case.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judiciously in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the website to which the disputed domain name resolves is in English; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the DANSKO trademark in the United States.
The Panel finds that the Complainant has rights and continues to have such rights in the relevant DANSKO trademark.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s DANSKO mark; (b) the descriptive words “outlet” and “online”; and (c) the top level domain suffix “.com”. The most prominent and distinctive part of the disputed domain name is the word “dansko” which is identical to the Complainant’s registered trademark. The addition of the descriptive words “outlet” and “online” does not provide sufficient distinction from the Complainant. On the contrary, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s distinctive mark DANSKO. This has the effect of strengthening the likelihood of confusion created as consumers may be led to believe that there is a connection between the disputed domain name and the Complainant, its domain names and its mark DANSKO. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the considerable reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s DANSKO mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the DANSKO mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “dansko” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the DANSKO mark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. The Complainant and its DANSKO mark enjoy a considerable reputation in the retail sector, particularly for the sale of shoes and clogs. DANSKO is also a registered trademark in the United States. Consequently, in the absence of contrary evidence from the Respondent, the DANSKO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
5. The Complainant has also adduced evidence to show that the disputed domain name upon which the Respondent’s website resolves makes unauthorized use of the Complainant’s copyrighted product images, graphics and content which are used by the Complainant’s official product outlet website at . This is indicative of circumstances indicating that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him/her. In particular, the Respondent has failed to make submissions to demonstrate that he/she has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The Panel concludes based on the case file that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this regard, the Panel finds that the Complainant and its DANSKO mark enjoy a considerable reputation in the retail sector particularly with regard to shoes and clogs in the United States. The Complainant has also established that it has considerable exposure and presence in the Internet through its official website at the following domain names: , and . In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks can transcend national borders. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. The Complainant has shown by a comparison between a screen-shot of the website homepage and a screen-shot of the Complainant’s official website homepage that the Respondent’s website makes unauthorized use of the Complainant’s copyrighted product images, graphics and content which are used by the Complainant’s official product outlet website at .
Thus, the Panel finds that the Respondent has through the use of the confusingly similar disputed domain name created a likelihood of confusion with the Complainant’s trademark and this constitutes a misrepresentation to the public that the Respondent’s website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith. 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 be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: May 18, 2012
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