Complainant is Steven Madden, Ltd. of Long Island City, New York, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.
Respondent is Daniel Monroy of Guatemala, Guatemala. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2015.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 17, 2015. 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
Complainant is a well-known company involved in the design, manufacture and sale of shoes, boots and accessories. Complainant’s net sales for 2014 totaled about USD 1.3 billion.
Complainant owns the following trademarks registrations in the United States:
- STEVE MADDEN (and design), Reg. No. 2,191,473, Reg. Date September 22, 1998, filed on March 3, 1997, covering jewelry, etc., in International Class 14. First use/first use in commerce: March 1998.
- STEVE MADDEN (and design), Reg. No. 3,350,461, Reg. Date December 4, 2007, filed on July 5, 2005, covering clothing belts in International Class 25. First use/first use in commerce: 1998.
- STEVE MADDEN, Reg. No. 4,511,533, Reg. Date April 8, 2014, filed on July 24, 2012, covering footwear, etc., in International Class 25. First use/first use in commerce: June 1, 2013.
Complainant also owns the following trademark registration in Mexico:
- STEVE MADDEN, Reg. No. 1300850, filed on February 22, 2012, covering bags, wallets, backpacks, etc. in International Class 18.
Complainant has registered the domain name, under which it operates “www.”, its primary website.
The record for the disputed domain name in the WhoIs database of the Registrar was created on October 1, 2010. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s domain name, used by Complainant. Respondent has designed a website using the STEVE MADDEN trademarks and is advertising unauthorized Steve Madden-branded merchandise.
Respondent has no rights or legitimate interests in respect of the disputed domain name. (See more detailed contentions of Complainant on rights and legitimate interests in section 6.B. below.)
The disputed domain name was registered and is being used in bad faith.
Respondent’s sole reason in using the disputed domain name is to mislead the public into believing that Respondent’s business at “www.” is associated with and/or authorized by Complainant, which is not true. Complainant has spent millions of dollars in advertisement and promotion of the STEVE MADDEN trademark, on the Internet through its website “www.” and in many other advertising media. Based on its United States federal trademark registrations and worldwide trademark registrations and extensive use, Complainant has the exclusive right to use the STEVE MADDEN trademark in connection with shoes and accessories and online retail services.
By using the disputed domain name, Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s STEVE MADDEN trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the services being offered on Respondent’s website. Thus, Complainant believes the disputed domain name has been registered and is being used in bad faith, and that it creates a likelihood or confusion in the marketplace. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting copies of certificates of registration, Complainant has shown to the satisfaction of the Panel that it owns rights in the mark STEVE MADDEN. See section 4 above.
The Panel notes that in the disputed domain name the STEVE MADDEN trademark is incorporated in its entirety (without the space between “Steve” and “Madden”), and adding the “ca” term and the “.com” top Level Domain. “ca” may be the abbreviation for “Centroamérica” in Spanish or “Central America” in English. Alternatively, “ca” may be a generic term, the abbreviation for “Compañía Anónima” (a corporation where the capital is divided into shares.) The consensus view of UDRP panels is that a geographic or generic term, when added in a domain name to a mark, normally is inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9.
Accordingly, the Panel finds that the disputed domain name is confusingly to Complainant’s STEVE MADDEN mark. B. Rights or Legitimate Interest
Complainant contends that it has not authorized or licensed Respondent to use its registered trademarks and that Respondent has no rights or legitimate or interests in the STEVE MADDEN trademarks. Complainant adds that Respondent is not commonly known by the disputed domain name, and that there can be no legitimate business reason for Respondent to own and/or use the disputed domain name, aside from wrongfully leading the public to believe that Respondent’s website is associated with, authorized by, or sponsored by Complainant. Complainant concludes that there can be no legitimate business reason for Respondent’s use of the STEVE MADDEN trademarks in connection with the disputed domain name.
The Panel believes that these contentions are convincing given the evidence by Complainant, namely a printout of the main page of the website at the disputed domain name, and a printout of Complainant’s official website “www.”. In the Panel’s opinion, a comparison of the main pages of both websites shows that the look and feel of Respondent’s “www.” website substantially imitates Complainant’s official website. In fact, by listing the addresses of stores located in various countries of Central America where products under the STEVE MADDEN mark allegedly are sold, on the website at the disputed domain name Respondent presents itself as if it were Complainant itself, or a subsidiary or branch of Complainant. In particular, the website at the disputed domain name does not appear to belong to a reseller or a distributor of Complainant’s products making a bona fide offering of goods and services because it fails to comply with the requirements that the consensus of previous panels established following the findings of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See WIPO Overview 2.0, paragraph 2.3 (“Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?”) (“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder […]”). From the contents of the website, it is not apparent whether Respondent is actually offering the goods at issue, i.e. goods under the STEVE MADDEN mark, or simply is listing shop addresses allegedly selling such goods. Further, the Panel notes that Respondent does not disclose its relationship (or lack thereof) with the trademark’s holder. Accordingly, the Panel concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).
Further, since Respondent’s name as per the corresponding WhoIs database is “Daniel Monroy”, the Panel believes that Policy paragraph 4(c)(ii) should be discarded.
Finally, Respondent is using the website at the disputed domain name to elicit personal information from Internet users visiting the website (name, surname, phone number, email address, age, birth date, country, shoe size, etcetera) through filling a form. In the Panel’s opinion, such users presumably would not provide such data unless they believe they are dealing with Complainant or with a representative of Complainant. In the Panel’s opinion, since personal data are a valuable commodity, eliciting such data as described is not a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy paragraph 4(c)(iii).
Given Respondent’s failure to provide any allegation or evidence in its favor, the Panel agrees with Complainant that there can be no legitimate business reason for Respondent’s use of the STEVE MADDEN trademarks in connection with the disputed domain name. The Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that several of Complainant’s registrations for the STEVE MADDEN mark in the United States predate the registration of the disputed domain name by many years. Further, Complainant’s mark enjoys considerable renown in the fashion business. Also, as shown by the contents and look and feel of the website at the disputed domain name, Respondent is presenting itself as if it were Complainant, which necessarily means that Respondent knew of and targeted Complainant, its STEVE MADDEN marks and products at the time of registering the disputed domain name. See MasterCard International Incorporated v. Dhe Jonathan Firm,WIPO Case No. D2007-0831 (“The widespread fame and use of the MASTERCARD mark in the credit card industry, Complainant’s prior domain name registrations and trademark registrations lead to the inevitable conclusion that Respondent registered and is using the domain name with actual knowledge of Complainant’s rights.”) In the circumstances of this case this shows that the registration of the disputed domain name was in bad faith.
As seen above, Respondent on the website at the disputed domain name nearly is impersonating Complainant, while trying to elicit personal information from Internet users presumably looking for Complainant and its STEVE MADDEN mark. Presumably, such users would not provide this information unless they believe they were dealing with Complainant. The purposes for this gathering of data are neither stated on Respondent’s website nor elsewhere explained by Respondent, but it is rather obvious that personal information obtained from Internet users is a valuable commodity in an age of marketing through massive emailing. See AB Gustaf Kähr v. Prasanth sp, inet,WIPO Case No. D2011-1455. Given the renown of Complainant’s mark and fashion products, it is evident that Respondent has availed itself of this renown to elicit these data.
The Panel concludes that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent’s website or location. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv). 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 Complainant.
Roberto A. Bianchi
Sole Panelist
Date: July 31, 2015
Full & Egal Universal Law Academy