ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Dansko, LLC v. Client Care, Web Commerce Communications Limited; Joel Black; Faith Macdonald; Charlie Harrison; Anthony Collier; Natasha May; and Reece Stephens Case No. D2023-2498 1. The Parties The Complainant is Dansko, LLC, United States of America ("United States"), represented by Cozen O'Connor, United States. The Respondents are Client Care, Web Commerce Communications Limited, Malaysia; Joel Black, Spain; Faith Macdonald, Germany; Charlie Harrison, Germany; Anthony Collier, Germany; Natasha May, Spain; and Reece Stephens, Spain. 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2023. On June 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown Registrant c/o Alibaba.com Singapore E-Commerce Private Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2023. page 2 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 Respondents of the Complaint, and the proceedings commenced on July 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 18, 2023. The Center appointed Mihaela Maravela as the sole panelist in this matter on August 25, 2023. 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 According to information in the Complaint, the Complainant has provided since 1990 comfort footwear to customers around the world. The Complainant offers various footwear including boots, sandals, flats, and sneakers, all designed for long-wear and comfort. As testament to their comfort, the Complainant's footwear has been a top choice of medical professionals for over two decades. The Complainant has registered several trademarks consisting of or including DANSKO, such as the United States Trademark No. 3854991 for DANSKO, registered as of September 28, 2010. The Complainant also owns and uses the domain name . The disputed domain names were registered as follows: - the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and were registered on May 25, 2023; - the disputed domain names , , and were registered on May 20, 2023. At the time of filing of the Complaint, the majority of disputed domain names resolved to inactive websites while some of the disputed domain names either resolved to a warning page stating "Deceptive site ahead" or resolved to websites which appeared to have offered DANSKO products for sale at discounted prices. At the date of the Decision, all disputed domain names, except for , , , and , resolve to websites which appear to offer DANSKO products for sale at discounted prices. Those websites also display product images that also appear on the Complainant's website. The disputed domain names , , , , and resolve to warning pages stating "Deceptive site ahead". page 3 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain names are virtually identical to the Complainant's DANSKO trademarks. The descriptive or geographic terms in the disputed domain names do not eliminate the confusing similarity with the Complainant's DANSKO trademarks. With respect to the second element, the Complainant argues that the Respondents have no rights or legitimate interests with respect to the disputed domain names. The Respondents are not affiliated with the Complainant, and there is no evidence to suggest that the Respondents have registered the disputed domain names to advance legitimate interests for the bona fide offering of legitimate goods or services. Few of the disputed domain names resolve to websites with infringing content, prominently featuring the Complainant's DANSKO trademarks and copyrighted images purporting to offer identical footwear goods or are blocked to prevent phishing scams. The rest of the disputed domain names are passively held. As regards the third element, the Complainant argues that the Respondents clearly had the Complainant in mind when registering the disputed domain names as the Respondents registered the disputed domain names in May 2023, long after the Complainant first began using and registered the DANSKO trademarks. The disputed domain names are used in bad faith given, inter alia, the degree of distinctiveness or reputation of the Complainant's DANSKO trademarks, the Respondents' concealing their identity, the current use, and the implausibility of any good faith use to which the Respondents could put the disputed domain names. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue No communication has been received from the Respondents in this case. However, given that the Complaint was sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the "balance of probabilities" or "preponderance of the evidence", and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). 6.2. Procedural Issue: Consolidation of Multiple Respondents Consolidation of multiple domain name disputes under paragraphs 3(c) and 10(e) of the Rules may be appropriate where the particular circumstances of a case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. According to WIPO Overview 3.0, section 4.11.2, "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". page 4 In the present case, the Panel finds that the consolidation of the disputed domain names is justified as, inter alia: (i) the disputed domain names were all registered on May 20 2023 or on May 25, 2023, (ii) the disputed domain names are similar in construction, as they all incorporate the Complainants' trademark DANSKO with the addition of other term(s) in each disputed domain name and hyphens in some of the disputed domain names, (iii) most of the websites to which the disputed domain names resolve are inactive, (iv) the email addresses for the six Respondents have the same structure, i.e., [name followed by two numbers]@"cxtmail.com") with the postal addresses all only having a city and country; the remaining one Respondent seems to be related to a privacy service, (v) all disputed domain names were registered with the same Registrar, and (vi) the postal addresses for all of the Respondents are incomplete. Under the circumstances, the Panel finds that the consolidation is fair to the Parties, and the Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint, but have chosen not to try to rebut the consolidation (see WIPO Overview 3.0, section 4.11.2). Based on the available record, the Panel finds that it is more likely than not that the disputed domain names are subject to common control; hence, the Panel grants the consolidation for the disputed domain names and will refer to the Respondents as the "Respondent" hereinafter. 6.3. Substantive issues Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names were registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has proved rights over the DANSKO trademark. The disputed domain names incorporate the DANSKO trademark in its entirety. Each disputed domain name also includes one or two added term(s) and hyphens in few instances, which does not in the view of the Panel prevent the Complainant's trademark from being recognizable within the disputed domain names. Many UDRP panels have found that a disputed domain name is confusingly similar to a trademark where the relevant trademark is recognizable within the disputed domain name. See section 1.7 of the WIPO Overview 3.0. It is well accepted by UDRP panels that a generic Top-Level Domain ("gTLD"), such as ".com", is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain names in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant has established a prima facie case that it holds rights over the DANSKO trademark and claims that the Respondent has no legitimate reason to acquire and use the disputed domain names. page 5 There is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence provided by the Complainant, most of the websites at the disputed domain names were inactive while some of the disputed domain names either resolved to a warning page stating "Deceptive site ahead" or resolved to websites which appeared to have offered DANSKO products for sale at discounted prices. At the date of the Decision, all disputed domain names, except for , , , and , are used to allegedly offer for sale DANSKO branded goods at a discounted price, reproducing the Complainant's trademark and logo, as well as product images from the Complainant's website. Under these circumstances, it is reasonable to infer that the products offered on the websites at the disputed domain names are most likely counterfeits of the Complainant's products. Even if the products are genuine, the lack of a prominent and accurate disclaimer on the website at the disputed domain names as to their relationship with the trademark owner or the lack thereof, would falsely suggest to Internet users that the websites to which the disputed domain names resolve are owned by the Complainant or at least affiliated to the Complainant, contrary to the fact (as per the principles outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). With respect to the disputed domain names , , , , and , which resolve to warning pages stating "Deceptive site ahead", there is no evidence that the Respondent is using those disputed domain names in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial or fair use of those disputed domain names within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Also, there is no evidence that the Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. Furthermore, the nature of the disputed domain names, that include the Complainant's trademark in its entirety, together with a term or terms related to a geographical location or the Complainant's business, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because the Respondent did not respond to the Complainant's contentions. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain names' registration and use in bad faith. According to the unrebutted assertions of the Complainant, its DANSKO trademark was widely used in commerce well before the registration of the disputed domain names. The disputed domain names are confusingly similar with the Complainant's trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant's trademark at the registration dates of the disputed domain names. The Respondent provided no explanations for why it registered the disputed domain names. Moreover, at the time of the filing of the Complaint, some of the disputed domain names resolved to websites reproducing the Complainant's trademark and purportedly offering for sale the Complainant's products but at much lower prices. Under these circumstances it is reasonable to infer that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademarks, and to target those trademarks. page 6 At the date of the Decision, the majority of the inherently misleading disputed domain names resolve to websites, which copy the look and feel of the Complainant's website, display the Complainant's trademark, logo, and product images, ostensibly offering the Complainant's products at much lower prices without any accurate and prominent disclaimers on the websites regarding the relationship between the Respondent and the Complainant. As such, the disputed domain names suggest affiliation with the Complainant in order to attract consumers for commercial gain. The Respondent's bad faith registration and use of the disputed domain names can also be inferred from the warnings on the websites at the disputed domain names , , , , and . Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the Complainant's contentions or provide any evidence of actual or contemplated good-faith use, and indeed none would seem plausible. Although at the time of filing of the Complaint, most of the disputed domain names were inactive. Considering the circumstances of this case, the Panel finds that such non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). In the Panel's view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain names. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: September 8, 2023
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