Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Paris Brown
Claim Number: FA1905001843590
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, California, USA. Respondent is Paris Brown (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers.dev>, registered with 101domain GRS Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2019; the Forum received payment on May 16, 2019.
On May 17, 2019, 101domain GRS Limited confirmed by e-mail to the Forum that the <skechers.dev> domain name is registered with 101domain GRS Limited and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skechers.dev. Also on May 24, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a global leader in the lifestyle and performance footwear industry with products sold in more than 170 countries and territories around the world and has over 3,000 Skechers retail stores worldwide. Complainant has rights in the SKECHERS mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <skechers.dev>[i] domain name is identical to Complainant’s SKECHERS mark as it incorporates the mark in its entirely, merely adding the generic top-level domain “.dev.”
2. Respondent has no rights or legitimate interests in the SKECHERS domain name. Respondent is not commonly known by the <skechers.dev> domain name and Respondent is not a licensee, authorized retailer, or distributor of Complainant’s products or authorized to use Complainant’s mark in any manner.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to an inactive webpage.
4. Respondent registered and uses the <skechers.dev> domain name in bad faith. Respondent’s domain name contains an exact reproduction of Complainant’s SKECHERS mark and is an attempt to capitalize on the consumer recognition of the mark.
5. Additionally, based on the longstanding use of the SKECHERS mark, Respondent had active or constructive knowledge of Complainant’s rights in the mark at the time of registration of the domain name.
6. Finally, because the SKECHERS mark is distinctive and unique, it is unlikely that Respondent devised the term on its own.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKECHERS mark. Respondent’s domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skechers.dev> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the SKECHERS mark based on registration with the USPTO (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, Complainant has established rights in the SKECHERS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <skechers.dev> domain name is identical to Complainant’s mark as Respondent merely adds the “.dev” gTLD to Complainant’s fully incorporated mark. The addition of a gTLD to a fully incorporated mark is insufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel holds that the <skechers.dev> domain name is identical to the SKECHERS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skechers.dev> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <skechers.dev> domain name as Respondent is not commonly known by the domain name nor is Respondent a licensee, authorized retailer, or distributor of Complainant’s products or authorized to use Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that a respondent lacks rights or legitimate interest in a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <skechers.dev> domain name lists the registrant as “Paris Brown,” and there is no other evidence to suggest that Respondent was authorized to use the SKECHERS mark. Therefore, the Panel finds that Respondent is not commonly known by the <skechers.dev> domain name per Policy ¶ 4(c)(ii).
Complainant also contends that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skechers.dev> domain name as Respondent makes no demonstrable preparations to use the <skechers.dev> domain name. A failure to use a domain name incorporating the mark of another in connection with an active website may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services . . . . ”). Complainant provides a screenshot of the resolving webpage of the <skechers.dev> domain name which does not to an active webpage and displays the error message “This site can’t be reached.” Therefore Respondent does not use the <skechers.dev> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <skechers.dev> domain name in bad faith because Respondent registered the <skechers.dev> domain name containing an exact reproduction of Complainant’s well-known mark to capitalize on the consumer recognition of the SKECHERS mark. This demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also argues Respondent had constructive and/or actual knowledge of Complainant’s rights in the SKECHERS mark at the time of registration. Actual knowledge of a complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). A respondent’s use of a mark as a clear attempt to trade on the goodwill of a complainant’s mark may demonstrate a respondent’s actual knowledge of a complainant’s rights in the mark and thus bad faith per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and thus constitutes bad faith per Policy ¶ 4(a)(iii).”). Because Respondent incorporated Complainant’s mark exactly in the <skechers.dev> domain name, Panel holds that Respondent registered the <skechers.dev> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers.dev> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 29, 2019
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