WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deckers Outdoor Corporation v. Registration Private, Domains By Proxy, LLC / Eric Mafolo

Case No. D2019-2042

1. The Parties

Complainant is Deckers Outdoor Corporation, United States of America (“United States”), represented by Greer, Burns & Crain, Ltd., United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Eric Mafolo, United States.

2. The Domain Name and Registrar

The disputed domain name <decker-s.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 Complainant on August 26, 2019, 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 August 31, 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 Respondent of the Complaint, and the proceedings commenced on September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 25, 2019.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 11, 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

Complainant, Deckers Outdoor Corporation of California, designs and markets footwear, apparel and accessories for casual and sports wear under the UGG, Koolaburra, Hoka, Teva, and Sanuk brands. Complainant sells its products internationally through retail stores and online.

Complainant owns United States trademark registration No. 3591133 for the DECKERS mark (the “Mark”), registered on March 17, 1999 for “footwear” in class 25, for which it asserts use in the United States dating from November 1, 1975. Complainant and its affiliates operate domain names including <deckers.com> (registered in 1994), <deckers.asia> (registered in 2008), <deckersbrands.co.uk> (registered in 2014), <deckersbrands.com> (registered in 2014), and others.

The Domain Name, <decker-s.com> was registered by Respondent, identified as Eric Mafolo of the United States, on December 14, 2018 using a proxy service. It resolves to an inactive website. The case material contain copies of emails sent to various retailers by parties impersonating Complainant’s employees. The emails request the recipient to render payments due to Complainant to bank accounts supposedly held by Complainant’s group entities. The sender email addresses contain the Domain Name.

On February 4, 2019, prior to commencing this proceeding, Complainant sent Respondent a cease-and-desist letter via email, requesting that Respondent cease use of the Domain Name, transfer the Domain Name to it, and provide copies of emails sent using the Domain Name. Respondent did not reply.

The case materials contain Complainant’s affidavit attesting that it has not given Respondent a license or any right to use the Mark, nor is Respondent an authorized distributor or supplier of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant’s submissions may be summarized as follows:

Under the first element, Complainant alleges that it has rights in the DECKERS Mark based on continuous use since 1975 and on its United States trademark registration. In addition, Complainant operates websites under domain names including <deckers.com> and <deckersbrands.com>. The Domain Name wholly incorporates the Domain Name and is recognizable within it. The addition of the hyphen is not significant when examining whether the Domain Name is identical or confusingly similar to Complainant’s Mark. Therefore, the Domain Name is identical and/or confusingly similar to Complainant’s Mark.

Under the second element, Complainant alleges that it has not given Respondent a license or any right to use its Mark, nor is Respondent an authorized distributor or supplier or DECKERS products. Respondent is engaging in fraudulent activities by sending scam emails that copy Complainant’s signature block format, including Complainant’s address and trademarks. Respondent sought fraudulent payments from Complainant’s business partners and customers. Respondent’s illegal activities are prima facie evidence of a lack of rights and legitimate interests in the Domain Name.

Under the third element, Complainant alleges that Respondent has registered and has used or continues to use the Domain Name in bad faith, which is based on the following:

i) The Domain Name registered entirely reproduces Complainant’s Mark.

ii) Bad faith can reasonably be inferred based on Complainant’s rights in the Mark and on Respondent’s lack of actual or contemplated bona fide or legitimate use of the Domain Name.

iii) Respondent is operating a fraudulent email scheme under the Domain Name requesting payment from Complainant’s business partners and customers, and said activities are clear evidence of registration and use of a domain name in bad faith.

iv) Respondent clearly knew about Complainant by incorporating Complainant’s actual address and email signature format into the fraudulent emails.

Complainant requests transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the 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 respect of the domain name; and

(iii) Respondent has registered and is using the domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the Mark, through a United States trademark registration and longstanding use of the Mark, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name wholly incorporates and is therefore confusingly similar to Complainant’s Mark. In particular, the Panel finds that the addition of the hyphen between “decker” and “s” does not prevent a finding of confusing similarity, since the Mark is readily recognizable within the Domain Name (see, for example, Worldpay Limited v. pay world / PrivacyProtect.org, WIPO Case No. D2014-0018 <world-pay.biz>, holding that “The disputed domain name contains all the elements the Complainants’ trademark WORLDPAY, differing only by virtue of a hyphen between the two words. The addition of a hyphen does not serve to distinguish the disputed domain name from the trademark in question.”).

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by many years.

The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name (comprising Complainant’s Mark and a hyphen) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Further, the evidence presented clearly demonstrates that the Domain Name was used by Respondent to generate fraudulent emails impersonating Complainant for unlawful purposes. Such a use cannot support a finding of rights or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.13.1 and cases cited.).

Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.

The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating Complainant and defrauding Complainant’s business partners and customers. Complainant’s rights in the Mark predate the registration of the Domain Name. The Mark is distinctive in respect of the goods for which it is registered and used. The Domain Name contains Complainant’s Mark in its entirety with the addition of a hyphen, which does not distinguish it from the Mark. There can be no doubt that Respondent chose the Domain Name in full awareness of Complainant’s Mark.

The evidence also demonstrates that Respondent used the Domain Name in bad faith. The fraudulent email messages created by Respondent incorporate the Domain Name and Complainant’s email signature block and contact information to unlawfully obtain payments from Complainant’s customers. In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent used the Domain Name in bad faith.

Additional circumstances further support a finding of bad faith: Respondent’s failure to respond to Complainant’s cease and desist letter; Respondent’s failure to file a substantive response to the Complaint and Respondent’s use of privacy services (see WIPO Overview 3.0, section 3.1.1), and the likely use of a false pseudonym in the domain name registration.

The Panel finds that Complainant has established the third element under paragraph 4(a) 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 <decker-s.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 25, 2019