Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1908001860287
Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainants”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, California, USA.
Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherscanadaoutlet.com>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainants submitted a Complaint to the Forum electronically on August 30, 2019; the Forum received payment on August 30, 2019.
On September 3, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <skecherscanadaoutlet.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@skecherscanadaoutlet.com.
Also on September 3, 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 September 24, 2019, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
Complainants request that the disputed domain name be transferred from Respondent to Complainants.
PRELMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
On the evidence adduced, the first named Complainant, Skechers U.S.A., Inc. is the owner of the rights in U.S. Trademark, SKECHERS registration number 1,851,977 registered on August 30, 1994 in respect of goods in international class 25.
The second named Complainant is a subsidiary of the first and there is a sufficient nexus to satisfy Supplemental Rule 1(e).
As owner of the registered rights, the first named Complainant is therefore the appropriate entity to which the disputed domain name should be transferred.
A. Complainants
Complainants rely on their rights in the above-mentioned registered trademarks and at common law through their extensive use of the SKECHERS trademark for over 25 years. By virtue of Complainants’ use, the SKECHERS trademark has become well recognized by consumers as designating Complainants as the source of the goods so marked. Accordingly, the SKECHERS mark is extremely valuable to Complainants.
Complainants submit that they have a multi-billion-dollar business in the lifestyle and performance footwear industry and the first named Complainant has been publicly traded on the New York Stock Exchange under the symbol SKX since 1999.
Complainants submit that their footwear products are sold in more than 170 countries and territories around the world in over 3,000 SKECHERS retail stores and online through their website <www.skechers.com> as well as through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide. The SKECHERS trademark is the house mark of the company that appears on Complainants' products.
Complainants submit that the disputed domain name is confusingly similar to Complainants’ SKECHERS mark because the domain name includes the SKECHERS mark in its entirety, adding the country name "canada", the generic term "outlet" and the generic top-level domain (gTLD) ".com" extension.
Complainants argue that the addition of a geographic term to Complainants' SKECHERS mark does not remove the disputed domain from the realm of confusing similarity. See, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 20014) ("…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.").
Complainants submit that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent registered the disputed domain name on August 14, 2019, long after Complainants registered SKECHERS as a trademark and long after Complainants began using the SKECHERS mark. The SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainants as a source of Complainant's products.
Complainants state that upon information and belief, Respondent is not a licensee, authorized retailer, or distributor of Complainants' products. Nor is Respondent otherwise authorized to use the name or the SKECHERS trademark for any purpose.
Furthermore, Complainants assert upon information and belief, that Respondent is not commonly known by the disputed domain name. Dynadot WHOIS information lists "Super Privacy Service LTD c/o Dynadot" as the registrant and there is no other evidence in the record to suggest that the Respondent was commonly known by the <skecherscanadaoutlet.com> domain name.
Complainants also allege that that the disputed domain name was registered and is being used in bad faith, arguing that the exact reproduction of Complainants' SKECHERS mark in the disputed domain name indicates a prior knowledge of Complainants and Complainants' business when the disputed domain name was registered. Complainants' SKECHERS trademark was registered in 1994, well before Respondent's registration of the <skecherscanadaoutlet.com> domain name in 2019 and therefore Respondent had at least constructive knowledge of Complainants' rights in the trademark at the time the disputed domain name was registered.
Moreover, Complainants argue that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on its own. This factor alone weighs in favor of finding bad faith against Respondent. (See, Neuberger Berman, Inc., No. D2000-0323 (WIPO Nov. 2, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith); cf. Bigstar Entm't, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185 (S.D.N.Y. 2000) ("…the more unique and inherently distinctive the marks, the stronger it is, and the greater the likelihood that the public may confuse a similar mark"). There is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name.
Complainants submit that the printout of the website to which the disputed domain name resolves prominently and in bad faith, displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have rights in and use the SKECHERS trademark primarily in connection with the goods footwear and apparel and related retail services and have been using the SKECHERS mark in connection with the relevant goods since 1993.
The first named Complainant is the owner of a portfolio of registered trademarks including:
U.S. Trademark, SKECHERS registration number 1,851,977 registered on August 30 1994 in respect of goods in international class 25.
The second named Complainant is a subsidiary of the first named Complainant. Complainants also own the <skechers.com> domain name which is the address of Complainants’ official website and on which the Complaints' goods are offered for sale.
In the absence of a Response, the only information available about Respondent is that provided in the Complaint and the Registrar’s WhoIs data. The disputed domain name was registered on August 14, 2019 and resolves to a website offering for sale goods which are alleged to be counterfeit, which allegation has not been denied.
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 Complainants 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 Complainants' 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”).
The first named Complainant is the owner of and has rights in the SKECHERS trademark and both Complainants have established a goodwill in the use of the mark in their global footwear business.
The disputed domain name consists of Complainants’ trademark SKECHERS in its entirety in combination with the geographic element “Canada” and the descriptive element “outlet” together with the gTLD <.com> extension.
Having compared the disputed domain name and Complainants’ SKECHERS mark, this Panel finds that Complainants’ mark is the initial, dominant and only distinctive element of the disputed domain name. Furthermore, the elements “canada” and “outlet” being geographic and descriptive in character do not distinguish the disputed domain name in any way or prevent a finding of confusing similarity with Complainants’ mark. In the circumstances of this proceeding, the <.com> element may be ignored for the purposes of comparison.
This Panel therefore finds that the disputed domain name is confusingly similar to the SKECHERS trademark in which the Complainants have rights.
Complainants have therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainants have made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainants assert that Respondent is not a licensee, authorized retailer, or distributor of Complainants' products; nor is Respondent otherwise authorized to use the name or the SKECHERS trademark for any purpose.
Furthermore, Complainants assert upon information and belief, that Respondent is not commonly known by the disputed domain name. Dynadot WHOIS information lists "Super Privacy Service LTD c/o Dynadot" as the registrant and there is no other evidence in the record to suggest that the Respondent was commonly known by the <skecherscanadaoutlet.com> domain name.
Complainants also allege that that the disputed domain resolves to a website on which counterfeit products are offered for sale as being Complainants’ goods.
It is well established under the Policy that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to establish its rights or interests.
In the present case, Respondent has failed to deliver a Response or to discharge the burden of production. Complainants are therefore entitled to succeed in the second element of the test in Policy ¶ 4(a)(ii) also.
The relatively recent registration of the disputed domain name post-dated Complainants’ trademark registration and the development of its global reputation by many years. Furthermore as asserted by Complainants, the dominant and only distinctive element of the disputed domain name is Complainants’ distinctive trademark which a coined term with no meaning outside its use as a means to identify Complainants as a source of Complainants' products.
It is therefore improbable that that the disputed domain name was registered without any knowledge of Complainants and their rights. This Panel finds therefore that on the balance of probabilities the disputed domain name was created and registered in bad faith in order to take predatory advantage of Complainants’ goodwill in the SKECHERS mark.
Complainants have adduced in evidence a print out of a website to which they alleges the disputed domain name resolves. The content of the website consists of extensive use of Complainants’ website along with numerous photographs of footwear offered for sale at hugely discounted prices and including the wording “Wholesale Skechers Shoes Canada Sale | Skechers Canada Official Site | skecherscanadaoutlet.ca”. Complainants allege that the goods offered for sale are counterfeit. This Panel finds that on the balance of probabilities Complainants are not the source of the goods offered for sale by Respondent because of the level of discount offered from recommended retail pricing. This Panel furthermore finds that the content of Respondent’s website is devised to give the impression that the website is owned and/or maintained by and/or has a connection with Complainants, which it does not have, and which is calculated to deceive consumers.
Complainants have therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and are entitled to succeed in their application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, for reasons given above, it is Ordered that the <skecherscanadaoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 29, 2019
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