ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Dansko, LLC v. Marin Andre Case No. D2025-3028 1. The Parties Complainant is Dansko, LLC, United States of America “(United States”), represented by Cozen O'Connor, United States. Respondent is Marin Andre, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2025. On July 30, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2025, 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 (Unknown Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2025, 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 31, 2025. 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2025. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2025.
page 2 The Center appointed Scott R. Austin as the sole panelist in this matter on September 4, 2025. 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 following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and provide evidence sufficient to support: Since 1990, Complainant has provided comfort footwear to customers around the world under the trademark DANSKO (the “DANSKO Mark”), including clogs, boots, sandals, flats, and sneakers, designed for long-wear and comfort. Complainant shows its footwear products have been recognized as a top choice among medical professionals for over two decades for their comfort. Complainant claims common law and statutory trademark rights through a number of registrations it holds in the United States and around the world for the DANSKO Mark for its footwear products, including the following: - United States Registration No. 2,712,957, DANSKO, registered on May 6, 2003, 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; - United States Registration No. 2,712,953, DANSKO (plus design), registered on May 6, 2003, 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; - United States Registration No. 4,172,633, DANSKO XP, registered on July 10, 2012, for “Footwear” in International Class 25; and - United States Registration No. 5,638,606, DANSKO NATURAL ARCH, registered on December 25, 2018, for “Footwear; Insoles for footwear sold as a component of footwear” in International Class 25. The disputed domain name was registered on June 12, 2025, and resolves to a website which displayed pages similar to the content on the official DANSKO Mark website, including Complainant’s trademark as well as infringing copies of Complainant’s copyright protected digital images of its footwear products. The website purports to sell footwear including footwear identified by the DANSKO Mark and displays products on which the DANSKO Mark figurative design can clearly be seen on the heel portion of the insole. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to cancel a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: 1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. 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. The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Trademark registration evidence has been submitted in the form of electronic copies of valid and subsisting national trademark registration documents in the name of Complainant referenced in Section 4 above. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1; see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. The Panel finds Complainant’s foregoing national registrations are sufficient to demonstrate statutory trademark rights in Complainant’s DANSKO Mark to meet Complainant’s burden under the first element of the Policy. A side-by-side comparison between the disputed domain name and Complainant’s mark shows the disputed domain name is confusingly similar to Complainant’s DANSKO Mark. Complainant’s DANSKO Mark is incorporated in its entirety in the disputed domain name with the additional term “scrubswear” between the Mark and the Top-Level Domain (“TLD”) “.com”. Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; see also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Prior UDRP panels have also found the TLD, being viewed as a standard registration requirement, may typically be disregarded under the
page 4 paragraph 4(a)(i) analysis. See WIPO Overview 3.0, section 1.11.1; see also Kinetic Concepts, Inc. v. Sheppard Stetve, WIPO Case No. DCO2015-0007. Complainant also contends that the disputed domain name must be considered confusingly similar to Complainant’s Mark because the inserted term “scrubswear” is a reference to the appeal of Complainant’s footwear products to workers in the healthcare industry, but this issue is more properly considered under elements two and three of the Policy. The Panel finds that the inserted term “scrubswear” does not prevent a finding of confusing similarity with Complainant’s DANSKO Mark, and the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a respondent’s rights to and legitimate interests in a domain name are present in this case. Complainant contends Respondent’s use of the disputed domain name is neither a Policy 4(c)(i) bona fide offering of goods or services nor a Policy 4(c)(iii) legitimate noncommercial or fair use. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. First, Complainant contends that Respondent has no rights in the disputed domain name. Complainant asserts that it has no commercial relationship with Respondent, Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent authority or license to register or use Complainant’s trademarks in any manner, including in domain names. Prior UDRP panels have held “in the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875. Second, there is no evidence to suggest that Respondent is commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). Respondent, as registrant of the disputed domain name, identified as “Marin Andre” is not commonly known by the disputed domain name because it clearly bears no resemblance to it. Complainant further contends that because Respondent anonymously registered the disputed domain name and the website displays unauthorized content infringing on Complainant’s DANSKO Marks, Respondent cannot claim to be commonly known by the disputed domain name. Prior UDRP panels have held where no evidence, including the WhoIs record for the disputed domain name, suggests that Respondent is commonly known by the disputed domain name,
page 5 then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s submitted screen shots of the web pages accessed through the disputed domain name show, the disputed domain name resolves to a “copycat” version of Complainant’s official DANSKO Mark website to create a false association with Complainant. Complainant argues, therefore, that “Respondent has made every effort to confuse consumers into believing the disputed domain name is related to Complainant by offering identical footwear and footwear products via a website that is confusingly similar to Complainant's bona fide website.” The Panel notes that evidence submitted persuasively supports Complainant’s argument because it shows Respondent’s website prominently displays unauthorized infringing copies of Complainant’s copyright protected digital images of its casual footwear products, unauthorized content infringing on Complainant’s DANSKO Marks and the purported ability to order Complainant’s products. Respondent’s activities therefore undermine any claim of rights and legitimate interests. Complainant shows that Respondent is using the disputed domain name to confuse Internet users and suggest an affiliation with or sponsorship by Complainant to redirect Internet users to its website for its commercial gain. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading. Respondent, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525; see also Frankie Shop LLC v. Jie Wen, WIPO Case No. D2022-4197. It is a well-established principle according to a consensus of UDRP Panels that the use of a domain name for illegitimate activity such as the impersonation or selling possibly counterfeit goods found here, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. See also The Frankie Shop LLC v. Domain Protection Services Inc. / My Mo, WIPO Case No. D2022-0825. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Complainant contends that Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business by registering a domain name that incorporates the DANSKO Mark in its entirety with the insertion of the term “scrubswear” between Complainant’s mark and the TLD “.com”. Respondent has thereby created a domain name for registration that is confusingly similar to Complainant’s trademark, as well as its official domain name. Prior UDRP panels have found a domain name was registered in bad faith where the respondent registered the domain name for the purpose of intentionally attempting to impersonate or mislead in order to commit fraud. See, e.g., Houghton Mifflin Co. v. The Weatherman Inc., WIPO Case No. D2001-0211; Frankie Shop LLC v. Bgeew Aferg, WIPO Case No. D2022-3619; Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861.
page 6 Prior UDRP panels have also held where the disputed domain name is configured in a manner to wholly incorporate a complainant’s mark, as Complainant’s Mark is incorporated here, with an intervening term, “scrubswear”, related to the recognized appeal of Complainant’s footwear products for their comfort to professionals in the healthcare industry, the disputed domain name can only sensibly refer to Complainant; thus, there is no obvious possible justification for Respondent’s selection of the disputed domain name other than registration in bad faith. See Frankie Shop LLC v. Bgeew Aferg, supra. As discussed in greater detail in Section 6B above, Complainant shows in evidence in the Annexes to its Complaint that Respondent used the disputed domain name to configure a copycat website to impersonate Complainant, attempted to attract Internet users seeking Complainant’s products through identical or counterfeit products at substantially discounted prices constitutes evidence of bad faith use under well-established principles in the cases decided under the Policy. See WIPO Overview 3.0, section 3.4 and The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephan Chukwumaobim, WIPO Case No. D2012-1088; Ropes & Gray LLP v. Domain Administrator, c/o DomainsByProxy.com / Account Receivable, WIPO Case No. D2020-0294. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use under the Policy. The Panel finds that the evidence presented here: 1) Respondent’s copycat website using Complainant’s trademark as well as content displaying infringing copies of Complainant’s copyright protected digital images of its products and figurative design logo; and 2) purportedly offering users the possibility to purchase Complainant’s footwear is sufficient for this Panel to find bad faith registration and use. Under these circumstances, there can be little doubt Respondent had actual knowledge of Complainant, targeted Complainant’s mark and used its actual knowledge to configure a mimic website for its commercial advantage. Accordingly, Complainant has established the third element of the Policy. 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. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: September 23, 2025
Full & Egal Universal Law Academy