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Ouch! Typosquatter kicked in the face by famous fashion footwear brand

In Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-2474 (Jane Seager, December 24, 2018), the Panel transferred the domain stevenmadden.com to the famous footwear, apparel, and accessories brand known as Steve Madden. Respondent, a Chinese individual, did not respond to the Complaint.

Turning to the first of the three elements of a UDRP claim, the Panel found that the disputed domain was confusingly similar to trademarks owned by the Complainant. Interestingly, despite its corporate name Steven Madden, Ltd., Complainant apparently does not own any STEVEN MADDEN trademarks, but does own several registration for STEVE MADDEN and also a registration for STEVEN BY STEVE MADDEN. The Panel found that the disputed domain was confusingly similar to both of these marks, emphasizing that “'Steven' is an obvious variation on the spelling of the name 'Steve', which forms part of the Complainant’s [STEVE MADDEN] trademark." Continuing, the Panel concluded that it "further considers the disputed domain name to be confusingly similar to the Complainant’s STEVEN BY STEVE MADDEN trademark as it wholly incorporates the first and last elements of the trademark."

As to the second element of a UDRP claim, whether Respondent has rights or a legitimate interest in the disputed domain, Complainant asserted and made out a prima facie case that Respondent had no such rights, shifting the burden on this issue to Respondent, which filed no response to the Complaint. The Panel specifically noted that it "accepts that use of the disputed domain name in connection with a pay-per-click parking page does not amount to bona fide use of a domain name."

As to the final element, whether the disputed domain was registered and used in bad faith, the Panel had no difficulty in finding bad faith. Given the extensive use and consumer recognition of the STEVE MADDEN trademark prior to registration of the disputed domain, coupled with the similarity of the disputed domain to Complainant's trademarks, the Panel readily found that the disputed domain was registered in bad faith. Interestingly, as further support that the domain was registered in bad faith, the Panel emphasized the use to which the domain had been put: "This inference ["that the Respondent registered the disputed domain name with the Complainant and its trademarks in mind"] is supported by the use to which the disputed domain name has been put, namely to redirect to a parking page at 'www.lebelleshoes.com' displaying pay-per-click links to the Complainant and competitors of the Complainant." As to use of the disputed domain in bad faith, the Panel again relied on the pay-per-click links to support bad faith use, but also held that "Respondent’s use of a privacy service to mask its identity together with the Respondent’s failure to reply to the Complainant’s cease-and-desist letter [is] further evidence of the Respondent’s bad faith."

Accordingly, the Panel ordered the transfer of the disputed domain.
 

Comments

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