WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp. Case No. D2018-2474 1. The Parties

The Complainant is Steven Madden of Long Island City, New York, United States of America (“United States”), represented by Hunton Andrews Kurth LLP, United States.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar

The disputed domain name is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on December 17, 2018. 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

Founded in 1990, the Complainant is a publicly-traded fashion design company that provides a wide range of footwear, clothing, accessories and other goods. Its products are marketed internationally to men, women, and children. The name of the Complainant reflects the name of its founder, Mr. Steven Madden.

The Complainant owns registrations for the STEVE MADDEN trademark, which has been registered in various jurisdictions around the world, including:

- United States trademark STEVE MADDEN, registration number 2012115, registered on October 29, 1996, and

- European Union Trade Mark STEVE MADDEN, registration number 010206415, registered on January 18, 2012, and

The Complainant also owns United States trademark STEVEN BY STEVE MADDEN, registration number 3389026, registered on February 26, 2008.

The disputed domain name was first registered on April 18, 2000. At some point, the initial registration lapsed, and appears to have been deleted. The disputed domain name was subsequently re-registered on July 2, 2004. The disputed domain name is registered in the name of a privacy service. The disputed domain name redirects to a parking page displaying payper-click links at “”. The payper-click links make reference to the Complainant, and otherwise relate to footwear, directing Internet users to third-party websites that advertise goods in competition with those of the Complainant.

In October 2017, the Complainant’s counsel sent a cease-and-desist letter (by email) to the Respondent. The Respondent did not reply. 5. Parties’ Contentions A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its STEVE MADDEN and STEVEN BY STEVE MADDEN trademarks. The Complainant states that the only difference between the disputed domain name and the Complainant’s trademarks is the addition of the letter “n”. The Complainant further argues that Internet users could easily mistype “” as “”, which the Complainant argues is an attempt at “typosquatting”. The Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing factor.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not authorized to make use of the Complainant’s trademarks in any way, including in domain names. The Complainant argues that the disputed domain name is not used for a bona fide offering of goods or services, that the Respondent has no rights in any registered trademarks for “STEVE MADDEN” or “STEVEN MADDEN” or any other similar terms or combinations of the foregoing, that the Respondent has never been commonly known by the disputed domain name, and that the Respondent’s use of the disputed domain name is neither legitimate nor fair.

The Complainant submits that the Respondent registered the disputed domain name with full knowledge of the Complainant’s STEVE MADDEN trademarks and corresponding domain names. The Complainant states that its registered trademarks date back to 1996, and that its domain name was registered in 1998, long before the registration of the disputed domain name in 2004. The Complainant further states that the registrant profile of the disputed domain name has changed constantly since its original registration in 2004. The Complainant states that based on the fame of its STEVE MADDEN trademarks, any claim by the Respondent that it was unaware of the Complainant’s trademarks at the time of registration would be meritless.

The Complainant states that the disputed domain name redirects to the website “” in an attempt to confuse Internet users into thinking that the Respondent is the Complainant, or is associated with the Complainant. The Complainant states that the links appearing on the website to which the disputed domain name redirects are part of a pay-per-click advertising scheme that targets the Complainant’s customers with links that they would be interested in, forwarding Internet users to unrelated websites, for which the Respondent receives referral fees. The Complainant further asserts that the disputed domain name may also be used as an instrument in a phishing scam wherein Internet users are led to believe that they are purchasing footwear from the Complainant, and may provide the Respondent with their personal financial data. Based on the above, the Complainant states that the disputed domain name was registered and used in bad faith.

The Complainant requests transfer of the disputed domain name. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

To succeed in its Complaint, the Complainant must prove on the balance of probabilities that it has satisfied the requirement of paragraph 4(a) of the Policy, as follows:

(i) the disputed domain name is identical or confusingly similar to a