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 Gertrude Anspach of Phoenix, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on July 6, 2017. 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 the owner of at least three United States registrations for the trademark STEVE MADDEN with registration dates prior to the date the disputed domain name was registered. Specifically, Complainant owns at least the following trademark registrations:
Country
Reg. no.
Mark
Date of Registration
United States
2012115
STEVE MADDEN
October 29, 1996
United States
4511533
STEVE MADDEN
April 8, 2014
United States
4518492
STEVE MADDEN
April 22, 2014
The disputed domain name was registered on May 8, 2017. According to the evidence provided by Complainant, the disputed domain name resolves to a website which apparently offers STEVE MADDEN−branded shoes. 5. Parties’ Contentions A. Complainant
Complainant is a publicly-traded company operating worldwide in connection with the design, manufacture and sale of shoes, boots, handbags, apparel and a wide variety of accessories under the trademarks: STEVE MADDEN, STEVE, STEVIES and MADDEN GIRL, among others. Complainant’s net sales for 2016 exceeded USD 1.4 billion.
Complainant’s trademark rights in the STEVE MADDEN trademark and service mark dates back to at least as early as October 1996. Based on Complainant’s federal and international trademark registrations and extensive use, Complainant owns the exclusive right to use the STEVE MADDEN trademark and service mark in connection with shoes, handbags and a large variety of apparel and accessories as well as in connection with online retail store services.
Long after Complainant established rights in the STEVE MADDEN trademarks and service marks, Respondent registered and began using the disputed domain name incorporating the STEVE MADDEN trademark in connection with a website at “www.”.
The disputed domain name is being used as a website that attempts to mimic Complainant’s “” e-tailing site. On this website, Respondent is selling old styles and left over inventory of STEVE MADDEN-branded shoes, further damaging the goodwill Complainant has built up under the STEVE MADDEN trademarks.
Confused customer going to Respondent’s site will be disappointed to not find the latest styles of Complainant’s products online. Respondent’s sole goal in using the Disputed Domain Name is to create a likelihood of confusion with Complainant’s Company and products.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complaint has rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and has subsequently used and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the STEVE MADDEN trademark and that the disputed domain name is confusingly similar to Complainant’s STEVE MADDEN trademark.
Complainant owns at least three trademark registrations in the United States for the word mark STEVE MADDEN.
Accordingly, Complainant has established rights in its STEVE MADDEN trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity).
The disputed domain name is confusingly similar to Complainant’s STEVE MADDEN trademark because the disputed domain name incorporates the entirety of Complainant’s STEVE MADDEN trademark and merely adds a descriptive term (i.e., “sneakers”) and the generic Top-Level Domain (“gTLD”) suffix “.com”. Neither the addition of a purely descriptive term to a well-known mark or the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
In this case the addition of the word “sneakers” to Complainant’s STEVE MADDEN trademark is insufficient to establish a domain name that is distinct from Complainant’s trademark and insufficient to avoid a finding of confusing similarity.
Confusing similarity is especially acute in this case where the merely descriptive terms (i.e., “sneakers”), simply describes a product sold by the Complainant in association with its STEVE MADDEN trademark. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. 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”).
Complainant has proven the requirements of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “steve” or “madden” or “sneakers” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence establishing rights or legitimate interests.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at the disputed domain name that features Complainant’s STEVE MADDEN trademark in a manner likely to confuse an Internet user into believing that the corresponding website is owned, operated and controlled by Complainant when it is not. Such use of the disputed domain name programmed to resolve to a website that gives the overall impression of some sort of formal connection with Complainant cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
Moreover, Respondent’s decision to add a common descriptive word (i.e., “sneakers”) to a well-known trademark does not instill Respondent with rights or legitimate interests in the corresponding domain name. See Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of and to the complainant).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the STEVE MADDEN trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was most likely aware of the rights owned by Complainant in STEVE MADDEN when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent is directly targeting Complainant on its website as part of the products it offers, as evidenced by the excessive use of the terms “steve madden”, identical to Complainant’s STEVE MADDEN trademark, on each webpage associated with the disputed domain name. In addition, the issue date for all three of these registrations precede the date upon which the disputed domain name was registered. The Panel finds this unrebutted allegation to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.
Furthermore, the Panel finds that the use of the disputed domain name falls within one of the express examples of bad faith identified in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to offer products apparently identical to the products offered by Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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.
Gary J. Nelson
Sole Panelist
Date: July 11, 2017
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