Complainant is Steven Madden, Ltd. of Long Island City, New York, United States of America, represented by Tucker & Latifi, LLP, United States.
Respondent is Eric Williams of Buckeye, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <stevemaddenfan.info> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009. On that same day the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. Also on July 17, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 21, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 29, 2009. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 21, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 1, 2009. 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 in the business of designing, manufacturing, marketing, advertising and retailing in the United States and abroad fashion apparel, bags, shoes and accessories under the STEVE MADDEN mark. Complainant sells its products in STEVE MADDEN-named retail stores and other fashionable boutiques and department stores worldwide.
Complainant owns the trademark STEVE MADDEN (the “STEVE MADDEN mark”) that it uses in connection with retail stores services, shoes, apparel, handbags, and other fashion accessories and related products for men and women. For example, Complainant owns trademark registrations with the United States Patent and Trademark Office (e.g., U.S. Registration Nos. 2,012,115 and 2,123,977) for the marks STEVE MADDEN and STEVE MADDEN plus a design, both for use on clothing. The former registration issued in October 1996, the latter issued in December 1997, both well before Respondent registered the Domain Name.
Since August 1998, Complainant has owned and operated an Internet site located at “www.stevemadden.com”, and sold its products through that site.
The disputed Domain Name was registered on March 21, 2009.
Complainant made of record multiple letters showing how it attempted to address this matter before commencing this proceeding. Complainant's counsel sent one letter dated April 21, 2009 to GoDaddy.com requesting that the registrar provide the contact information for the registrant of the Domain Name. In response GoDaddy.com confirmed that while they registered the Domain Name, they did not have the ability to transfer the Domain Name because it was hosted elsewhere. Counsel sent another letter dated April 24, 2009 to Global Net Access, LLC, requesting that they provide the contact information of the Domain Name registrant. Global Net Access, LLC claimed they sold the IP address to a third party who was hosting the Domain Name but provided Complainant's counsel with the third-party's hosting information. On May 22, 2009, Complainant's counsel sent a letter via E-mail and Federal Express to Matixowners.com requesting that they provide the contact information of the Domain Name registrant. The E-mail was return as undeliverable, and no one responded to the demand letter sent via Federal Express. After filing the initial complaint in this matter, GoDaddy.com identified Respondent and provided WIPO with his contact information.
On the website associated with the Domain Name, Respondent has been advertising for sale Complainant's merchandise (i.e., STEVE MADDEN shoes), and linking to Complainant's website “www.stevemadden.com”, other websites selling Complainant's shoes and websites of Complainant's competitors.
5. Parties' Contentions
A. Complainant
The Domain Name is identical or confusingly similar to Complainant's STEVE MADDEN mark and substantially identical to Complainant's “www.SteveMadden.com” domain name with the mere addition of the word “fan”. Complainant is primarily using the website for sales of STEVE MADDEN merchandise which further serves to foster confusion between Respondent's Internet site and Complainant's Internet site.
Complainant owns all rights in the STEVE MADDEN mark. Respondent registered the Domain Name to advertise and sell STEVE MADDEN shoes. Thus, Respondent has no rights or legitimate interests in the Domain Name.
Long after Complainant's adoption and use of the STEVE MADDEN mark, Respondent registered and commenced using the Domain Name. By using the Domain Name, Respondent is intentionally attempting to attract for commercial gain, Internet users to its web site by creating a likelihood of confusion with the STEVE MADDEN mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant, through its use of, and United States registrations covering, the STEVE MADDEN mark, has rights in that mark.
The Panel concludes that the Domain Name, <stevemaddenfan.info>, is confusingly similar to Complainant's STEVE MADDEN mark. The Domain Name incorporates the STEVE MADDEN mark in its entirety and merely adds the descriptive or generic term “fan”. This evidence is itself sufficient to satisfy Complainant's burden under the first factor. See, EAuto, Inc. v. E Auto Parts, Inc.,
WIPO Case No. D2000-0121.
Neither the use of “.info” or the addition of the term “fan” to the STEVE MADDEN mark prevents the Domain Name from being confusingly similar to Complainant's STEVE MADDEN mark.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See, Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has adduced evidence showing that it owns the STEVE MADDEN mark. There is no evidence of record disputing that or showing that Respondent has rights to use that mark for any purpose. There is also no evidence Respondent has been commonly known as STEVE MADDEN. He has been identified as Eric Williams.
Furthermore, from the evidence Complainant has submitted in this case and the Panel's own review of the website to which the Domain Name resolves, it is evident that Respondent is using the Domain Name on a commercial site for commercial gain and not in connection with a bona fide offering of goods or services. Respondent's site not only advertises for sale Complainant's STEVE MADDEN shoes (by name and photo), it also contains links to Complainant's website “www.stevemadden.com”, and sponsored links to other websites selling Complainant's shoes and websites of Complainant's competitors.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to rebut the Complainant's evidence. In this case, because Respondent has failed to file a Response, the Panel finds that the Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that may be considered as evidence of Respondent's registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [e.g., Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Based on the undisputed facts that (1) Complainant obtained United States trademark registrations for and used the STEVE MADEN mark well before Respondent registered the Domain Name, and (2) Respondent has been using Complainant's STEVE MADDEN mark and images of its shoes on the website to which the Domain Name resolves, advertising for sale Complainant's shoes, and linking to Complainant's website, it is clear to the Panel that Respondent knew of Complainant and its rights in the STEVE MADDEN mark before registering the Domain Name. Thus, the Panel concludes Respondent's registration was in bad faith.
Respondent's bad faith use is evidenced here by the fact that Respondent has been using the Domain Name to attract, for commercial gain, Internet users to Respondent's commercial web site, by creating a likelihood of confusion with Complainant's STEVE MADDEN mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product or service (e.g., footwear) on Respondent's web site.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <stevemaddenfan.info> be transferred to Complainant.
Harrie R. Samaras Sole Panelist
Dated: September 12, 2009
Stay updated! Get new cases and decisions by daily email.
