The Complainant is Steven Madden, Ltd., United States of America (“USA”), represented by Hunton Andrews Kurth LLP, USA.
The Respondent is Zhang Qiao Ling, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint in English and requested that English be the language of the proceeding on May 2, 2019.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 31, 2019. 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, Steven Madden, Ltd., is a successful apparel company that was founded in 1990 by a well-known fashion designer, Steve Madden, that provides a wide range of footwear, clothing, accessories and other apparel for men, women and children which are sold throughout the world.
The Complainant is the owner of numerous registered trademarks worldwide for the STEVE MADDEN mark, including but not limited to:
- STEVE MADDEN (Trademark No. 2012115) registered in USA on October 29, 1996;
- STEVE MADDEN (Trademark No. 3363402) registered in USA on January 1, 2008;
- STEVE MADDEN (Trademark No. 4559346) registered in USA on July 1, 2014;
- STEVE MADDEN (Trademark No. 4511533) registered in USA on April 8, 2014;
- STEVE MADDEN (Trademark No. 1232422) registered in China on December 21, 1998;
- STEVE MADDEN (Trademark No. 6391977) registered in China on May 7, 2010;
- STEVE MADDEN (Trademark No. 6391976) registered in China on May 7, 2010;
- STEVE MADDEN (Trademark No. 8149427) registered in China on November 7, 2016;
- STEVE MADDEN (Trademark No. 8662297) registered in China on August 14, 2014; and
- STEVE MADDEN (Trademark No. 12124632) registered in China on July 21, 2014.
The disputed domain name was registered on November 2, 2018 and resolves to an active website which imitates the Complainant’s online website and sells counterfeit goods of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered STEVE MADDEN mark as the disputed domain name wholly incorporates the STEVE MADDEN mark and only differs from the STEVE MADDEN mark by the addition of the word “shiny” into the disputed domain name.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use its trademark or register the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 judicially 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 abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
(iv) The website at the disputed domain name appears to be entirely in the English language.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates the Complainant’s STEVE MADDEN trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
The Complainant has provided evidence of its numerous trademark registrations in China, where the Respondent is based and the disputed domain name was registered.
It is also well established that the addition of a descriptive term to a disputed domain name would not prevent a finding of confusing similarity (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The addition of the descriptive word “shiny” therefore does not prevent confusing similarity under the first element.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. (See WIPO Overview 3.0, section 2.1.)
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns various trademark registrations in USA and China long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (See WIPO Overview 3.0, section 2.3).
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.
Accordingly and also based on the Panel’s findings on the use of the disputed domain name below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the STEVE MADDEN trademark since the year 1996. In view of the evidence filed by the Complainant, the nature of the disputed domain name and the widespread use of the STEVE MADDEN trademark globally, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (See Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In the particular circumstances of the present case, the disputed domain name resolves to an active website with the Complainant’s STEVE MADDEN mark clearly visible at the top of the website. The Complainant provided evidence that shows that the Complainant’s mark appears several times on the website at the disputed domain name where counterfeit goods are being sold at a heavily discounted price. Such use demonstrates that the Respondent is using the disputed domain name to obtain a commercial benefit by riding on the reputation and goodwill of the Complainant. Unsuspecting Internet users who visit the website at the disputed domain name may be confused and misled that the goods listed therein are sold by the Complainant. The Panel is convinced that the Respondent is using the Complainant’s trademark without authorization for the purpose of attracting visitors which may be confused into believing, at least initially, that the website at the disputed domain is in some form connected or endorsed by the Complainant, when it is not (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The Respondent’s behavior is therefore construed as indication of bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s mark, the confusing similarity between the disputed domain name and the Complainant’s mark, the Respondent’s use of the disputed domain name, the Respondent’s failure to present any credible rationale for registering the disputed domain name, and the fact that is no plausible good faith use the Respondent can put the disputed domain name to, the Panel draws the inference that the disputed domain name was registered and is being used 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.
Jonathan Agmon
Sole Panelist
Date: June 13, 2019
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