Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA1905001845696
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 Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechershungary.com>, registered with NameSilo, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2019; the Forum received payment on May 30, 2019.
On June 1, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <skechershungary.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@skechershungary.com. Also on June 4, 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 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two (2) Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through its registration with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <skechershungary.com> domain name is confusingly similar to Complainant’s SKECHERS marks as the domain name includes the SKECHERS mark in its entirety, adding the country name “Hungary” and the “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize or license Respondent to use the SKECHERS mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent prominently displays Complainant’s mark and uses the disputed domain name to sell counterfeit versions of Complainant’s products.
Respondent registered and used the <skechershungary.com> domain name in bad faith. Respondent’s disputed domain name contains an exact reproduction of Complainant’s SKECHERS mark and is an attempt to capitalize on the consumer recognition of the mark. Additionally, based on the longstanding use of the SKECHERS mark, Respondent must have had at least constructive knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name. 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.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <skechershungary.com> domain name.
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 contends that it has rights in the SKECHERS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the SKECHERS mark (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). The Panel finds that Complainant has rights in the SKECHERS mark.
Complainant further argues that Respondent’s <skechershungary.com> domain name is confusingly similar to Complainant’s SKECHERS marks as the domain name includes the SKECHERS mark in its entirety, adding the country name “Hungary,” and the “.com” gTLD. The addition of a geographic term along with a gTLD to a fully formed mark does not distinguish the disputed domain name from a mark per Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <skechershungary.com> domain name. Instead, the disputed domain name resolves to a webpage that prominently displays the SKECHERS mark and offers for sale suspected counterfeit versions of Complainant’s products. Use of a domain name to sell or market counterfeit products is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Complainant has provided screenshots of the resolving webpage of the disputed domain name which displays purportedly counterfeit versions of Complainant’s products. The Panel finds that Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent has no rights or legitimate interests in the <skechershungary.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize or license Respondent to use the SKECHERS mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed 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 the respondent is not commonly known by the disputed 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)”). There is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use Complainant’s SKECHERS mark. Additionally, the WHOIS information identifies the registrant as “Domain Administrator/See PrivacyGuardian.org.” The Panel finds that Respondent has no rights or legitimate interests in respect of the <skechershungary.com> domain name per Policy ¶ 4(c)(ii).
Complainant has proved this element.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith because Respondent registered the <skechershungary.com> domain name containing an exact reproduction of Complainant’s well-known mark to capitalize on the consumer recognition of the SKECHERS mark. A disputed domain name that is obviously connected with a complainant’s well-known mark, creating a likelihood of confusion strictly for commercial gain, may demonstrate 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). The Panel finds this is evidence that Respondent registered and uses the disputed domain name in bad faith Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <skechershungary.com> domain name with actual and constructive knowledge of Complainant’s rights in the SKECHERS mark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of 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.”). Registering a domain name that is unique increases the likelihood of bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that because Complainant’s mark is unique and arbitrary, it is unlikely the Respondent devised the term on its own. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark and registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <skechershungary.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 2, 2019
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