SHOE LAND Was Generic… But Not SHOE ZONE?


In the recent domain name dispute decision of Shoe Zone Limited v. Moniker Privacy Services / DNS Admin (WIPO D2009-0946, September 2, 2009) a single member Panel was faced with a dispute over the domain www.shoezone.com. Complainant is a retailer and distributor of footwear throughout Ireland and the U.K. Complainant has multiple trademark registration, including one in the U.K. and a Community Trademark registration.  Complainant maintains a web site at www.shoezone.net. The disputed domain was registered in November 1998. According to the decision, the disputed domain has changed ownership at least three times since its original registration, with Respondent gaining ownership some time after June 2006. Complainant contends that sometime in May 2009 the disputed domain started to have advertising links to competitors of Complainant. Respondent failed to respond to the Complaint.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel simply and quickly found that the disputed domain was identical to the mark and that Complainant has rights through its registrations to the mark. Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant made a sufficient prima facie case. The Panel found that there was no suggestion of authorization by Complainant, no evidence of “commonly known” by proof of Respondent, and that the use was clearly commercial through use of the sponsored links. The Panel thus found that Complainant satisfied the second element as well.

Moving to the final element, bad faith, the Panel noted that Respondent’s use of the domain as a landing page with sponsored links, without any explanation from Respondent, was sufficient proof of this element. The Panel also justified finding bad faith due to Respondent’s failure to respond and Respondent’s use of a privacy service.

Ultimately, the Panel found that Complainant had proved all three elements and ordered the domain be TRANSFERRED.

DefendMyDomain Commentary: Compare this case to the SHOE LAND case we previously blogged on (available here), Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009). Of course the facts are different, but one has to wonder whether a response by Respondent would have created a different outcome.

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