Based on the multiple trademark registrations cited by Complainant, supported by copies of relevant certificates of registration (including Community Trademarks Reg. Nos. 001149871 and 004568168; US Trademark Reg. Nos. 1935123 and 3187658; Canadian Trademark Reg. No. 280654; Australian Trademark reg. No. 375267A; and Chinese Trademark Reg. Nos. 208743), the Panel is convinced that Complainant has rights in and to the trademark ECOO for use in connection with footwear. This conclusion is consistent with previous UDRP decisions involving he same Complainant and trademark, e.g., ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800 (transfer of <eccoshoesaustralia.com>).
As to whether the disputed domain name is identical or confusingly similar to the ECCO trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "eccoshoesuk"), as it is well-established that the top-level domain name (i.e., ".net") should be disregarded for this purpose.
Here, because the word “shoes” is associated with the ECCO trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark -- as previous panels have held in cases involving the same Complainant and other domain names also containing the ECCO trademark and the word "shoes." ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800 (transfer of <eccoshoesaustralia.com>) See also Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”). See also Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (the addition of certain words can "exacerbate[] the confusing similarity between the [Complainant's] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks") (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 ("when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity")).
Further, the addition of a geographic term to a domain name, as here (i.e., "uk"), does not diminish any confusing similarity, especially where, as here, Complainant has trademark rights in the indicated geographic region. See, e.g., ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800 (transfer of <eccoshoesaustralia.com>) ("[i]t has been well established that the use of a geographic term in a domain name does not add distinctiveness"); and Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease, WIPO Case No. D2008-1309 (transfer of <holidayinnphiphi.com>) ("[t]his Panel further accepts the Complainant's submission that the combination of its trademark with the name of the Phi Phi Islands, where one of the Complainant's hotels is located, would serve to add to such confusion rather than distinguish the mark and the domain name").
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has stated that Respondent has no rights in the trademark ECCO and is not a reseller/licensee of Complainant, that use of the trademark ECCO by Respondent has never been authorized by Complainant, and that Respondent is using his website to promote the sale of third parties goods as well as goods, which are very likely counterfeit.
Under the UDRP, once a complainant has made out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainants have proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the website used by Respondent in connection with the disputed domain name allegedly offers for sale counterfeit ECOO products -- an allegation supported by printouts from Complainant's and Respondent's websites and not denied by Respondent. The sale of counterfeit products in such circumstances "is strong evidence of bad faith." Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, WIPO Case No. D2010-1589. See also Cartier International, N.V. , Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758 (finding bad faith where "the domain name contains the Complainant's mark and the website offers to sell counterfeit imitations of the Complainant's products").
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
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